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THE    LAW 

of 

PATENTS    for    DESIGNS 


With  particular  reference  to  the  practice  which  obtains 

in  the  prosecution  of  applications  for  design  patents 

in  the  United  States  Patent  Office  as  shown  by 

the  rules  and  decisions. 


By 

WILLIAM  L.  SYMONS,  LL.  M. 

Member  of  the  Bar  of  the  District  of  Columbia. 

Lecturer  on  the  Law  of  Trademarks  and  Patents  for 
Designs,  Washington  College  of  Law. 

Examiner,  United  States  Patent  Office. 


JOHN  BYRNE  &  CO. 

Washington,  D.  C. 

1914. 


COPYEIGHT    1914 
BY 

William  L.  Symons. 


All  Rights  Reserved. 


Syfc'??p 


)9l4- 


J.  W.  STOWELL  FEINTING  CO. 
FEDEEALSBUKG,  MD. 


19     14 


Ill 


ABBREVIATIONS  USED. 


"App.  D.  C." Decisions  of  the  Court  of  Appeals 

of  the  District  of  Columbia. 

"Bann.  &Ard." The  five  volumes  of  patent  cases, 

1874  to  1880,  collected  by  Bann- 
ing and  Arden. 


<( 


Blatch." Reports  of  Samuel  Blatchford. 


''C.  D." Decisions  of  Commissioners  of  Pat- 
ents. 

"  F. ' ' J'ederal  Reporter. 

"F.  C." Federal  Cases. 

"Gour." Gourick's   digest   of   Patent   Office 

manuscript  decisions. 

''O.  G." Official  Gazette  of  the  United  States 

Patent  Office. 

''U.  S." Decisions  of  the  Supreme  Court  of 

the  United  States. 

"Wall." Wallace's  Supreme  Court  Reports. 


761079 


DESIGN  PATENTS. 


CONTENTS. 

Pages 

Abbreviations  used ni^ 

Preface    1 

CHAPTER  I. 

Design  Patent  Statutes. 
Sections 

1  First  Patent  Act 5 

2  Subsequent  Laws    5 

3  Design  Patent  Laws  Now  in  Force 7 

CHAPTER  II. 
Subject  Matter  for  Design  Patent. 

-I:  Some  Detinitions  of  a  Design  Patent 11 

5  Must  Be  Original   13 

6  Design  Must  be  Ornamental 13 

7  ' ' Ornamental"  Defined   14 

8  Designs  Held  Not  Ornamental 15 

9  Articles  for  Obscure  Use 18 

10  "Useful"    18 

11  Mechanical  Function   22 

12  "Article  of  Manufacture"  23 

13  Machine  Not  Patentable  as  a  Design 28 

14  Superficial  Ornamentation 30 

15  Unitary  Structure 32 

16  Design  and  Copyright  Protection 33 

17  A  Trade  Mark  Not  a  Design 35 

18  Internal  Structure    37 

19  "Im]U'ovement"    39 


VI 

CHAPTER  III. 

Invention. 
Sections  Pages 

20  Invention  Necessary    41 

21  What  Constitutes  Invention 41 

22  Novelty  Not  Sufficient 47 

23  Non- Analogous  Arts    48 

24  Aggregation  of  Old  Ornaments  Not  Invention 53 

25  Change  in  Color,  Material,  or  Size  Not  Invention.  .56 

CHAPTER  IV. 
Novelty  and  Infringement. 

26  How  Determined 59 

27  Substantial  Identity  Negatives  Novelty  or  Es- 

tablishes Infringement    62 

28  Character  of  Evidence  Which  Negatives  Nov- 

elty or  Establishes  Infringement 66 

29  Illustrative  Cases   67 

30  Effect  of  Same  Design  in  Another  Art 70 

31  ''State  of  the  Art" 72 

32  Common  Knowledge    74 

33  Generic  Idea  of  Ornamentation  75 

34  Penalty  for  Infringement— Act  of  February  4, 

1887    77 


Vll 

CHAPTER  V. 

Applications  and  Letters  Patent. 
Sections  Pages 

35  Petition   79 

36  Specification     '^^ 

37  Should   Specification  Contain  a  Description  of 

the  Design   ^9 

38  Character  of  Description  Permissible  83 

39  Modifications  and  Variations 84 

40  Essential  and  Immaterial  Features  86 

41  New  Matter   87 

42  The  Claim    88 

43  Drawing    ^^ 

44  The  Original  Drawing— Changes  or  Additions 97 

45  Oath     .^ ; ^'^ 

46  Changing  Mechanical  to  Design  Application  or 

Vice  Versa  ^8 

47  Mechanical  and  Design  Applications   Showing 

Same  Structure 99 

48  Division  of  Application 101 

49  Re-issue     ^^-^ 

50  Terms  of  Design  Patents 102 

51  Fees    /  •  •   102 

52  Rules  and  Regulations  for  Mechanical  Applica- 

ble to  Design  Patent  Applications 102 

53  Form  of  Application  103 

54  Marking  a  Design  ''Patented" 107 

CHAPTER  ^^. 
Procedure  in  the  Patent  Office. 

55  Examination     109 

56  Interference    HI 

57  Petitions  and  Appeals 112 

Table  of  Cases 115 

Index   ^-"* 


PREFACE. 


Two  treatises  only  on  the  subject  of  design  patents 
have  been  published  in  the  United  States  during  the  sev- 
enty-two years  the  laws  granting  patents  for  this  charac- 
ter of  inventions  have  been  in  force.  The  first  was  pre- 
sented in  1874  by  former  Commissioner  of  Patents,  Wm. 
E.  Simonds ;  the  second,  in  1889  by  Hector  T.  Fenton,  Es- 
quire, of  the  Philadelphia  bar. 

That  the  texts  and  the  decisions  have  not  satisfactorily 
established  a  well  understood,  uniform  practice  in  design 
patent  cases  is  shown  by  the  comments  of  courts  and 
writers.    Mr.  Simonds  in  his  work  said: — 

' '  The  decisons  of  the  Patent  Office  have  been  conflicting 
and  the  court  cases  are  not  altogether  harmonious. '  '^ 

In  1871,  Commissioner  Leggett  in  discussing  the  intent 
of  the  design  law  stated  that : — 

' '  The  practice  of  the  Office  in  granting  design  patents 
has  been  not  only  liberal  but  lax. '  '^ 

A  few  years  later  in  discussing  a  question  which  was 
often  raised  in  design  cases,  the  Commissioner  of  Patents 
said : — ''It  is  not  to  be  denied  that  the  record  of  the  Office 
on  this  question  is  somewhat  ragged. '  '^ 

In  the  leading  case  of  Rowe  v.  Blodgett  &  Clapp  Co."* 
the  practice  of  the  Office  in  issuing  design  patents  was 
condemned  on  the  ground  that  it  was  not  uniform.  In 
this  case  the  court  approved  the  view  of  the  design  law 
set  forth  in  ex  parte  Parkinson,  supra,  and  cited  several 

1 — Simonds  on  Design  Patents — Preface. 
2 — Parkinson,  1871,  C.  D.  251. 
3_siioeninger,  15  O.  G.  384;   1878  C.  D.  128. 
4 112  F.,  61;  98  O.  G.,  1286;  1902  C.  D.  583. 


2  Patents  for  Designs 

cases  in  which  the  interpretation  of  the  law  given  in  that 
decision  had  been  upheld.  The  court  in  Marvel  Co.  v. 
PearP  condemned  the  grant  of  a  design  patent  for  a 
syringe  as  *'a  perversion  of  the  statute". 

At  the  present  time  much  doubt  and  confusion  exists 
as  to  what  is  proper  subject  matter  for  a  design  patent; 
nor  is  the  practice  in  this  class  of  patents  well  settled. 
Whether  the  specification  should  contain  a  description 
of  the  design,  and  whether  a  patent  may  be  issued  for  a 
surface  ornamentation  are  among  the  questions  which 
have  received  considerable  attention  and  not  altogether 
satisfactory  answers. 

Relative  to  many  questions  of  design  practice  what 
Commissioner  Fisher  said  in  1869  is  true  today.  "The 
practice  of  this  Office  has  not  been  uniform,  and  the  true 
practice  is  still  to  be  adopted  and  followed."^ 

It  is  hoped  that  this  small  contribution  on  the  subject 
of  design  patents  will  assist  in  determining  the  questions 
of  law  and  procedure  which  are  still  unsettled  by  bring- 
ing together  for  consideration  the  conflicting  views  and 
decisions,  for  nothing  makes  for  the  better  elucidation  of 
a  subject  than  to  have  the  different  views  on  it  considered 
together. 

That  the  interest  in  the  subject  of  design  patents  has 
increased  during  the  last  few  years  is  indicated  by  the 
larger  number  of  applications  for  patents  filed  and  the 
amount  of  litigation  on  this  subject.  In  1905,  781  appli- 
cations for  design  patents  were  filed  in  the  Patent  Office; 
in  1910  the  number  had  increased  to  1155 ;  in  1911  to  1534, 
and  in  1912  to  1844.  During  the  year  1913,  about  2100 
applications  were  filed,  which  is  approximately  175  per 
centum  more  than  in  1905. 

The  questions  of  novelty  and  infringement  of  designs 
are  so  closelv  related  and  have  been  so  often  considered 


1 — 114  F.,  946. 

2 — Bartholomew,  1869  C.  D.  103. 


Peepace  3 

together^  that  is  has  been  concluded  advisable  to  treat 
them  in  the  same  chapter. 

The  collection  of  the  data  which  has  been  utilized  in 
writing  this  volume  was  begun  in  connection  with  the 
preparation  of  lectures  delivered  before  the  students  tak- 
ing the  course  in  Patent  and  Trademark  Law  in  the 
Washington  College  of  Law. 

William  L.  Symons. 

Washington,  D.  C,  1914. 

1 — Kraus  v,  Fitzpatrick  34  F.,  39;  42  O.  G.  1912;  1888  C.  D.  291; 
Redway  v.  Ohio  Stove  Co.  38  F.,  582;  Ripley  v.  Elson  Glass  Co.  49 
F.,  927;  Bevin  Bros.  v.  Starr  Bros.  114  F.,  362;  Gorham  v.  White 
14  Wall,  511. 


THE  LAW  OF  DESIGNS. 

Chapter  I. 
DESIGN  PATENT  STATUTES.^ 

1.  First  Design  Patent  Act.— Patents  for  designs  were 
first  authorized  by  section  3  of  the  Act  of  1842.  In  this 
Act  the  words  "invented  or  produced"  were  used  instead 
of  the  words  "invented  or  discovered"  used  in  the  origi- 
nal patent  Act  of  1790,  and  in  subsequent  laws.  The  fee 
in  design  cases  was  by  this  Act  fixed  at  one  half  the  sum 
then  required  by  the  patent  laws  in  force,  and  the  dur- 
ation of  the  patent  was  limited  to  seven  years.  Only  1387 
patents  were  issued  under  this  law. 

2.  Subsequent  Laws. — The  Act  of  1842  was  repealed 
in  1861.  This  Act  of  1861  made  slight  changes  in  the  sub- 
ject matter  for  which  a  design  patent  might  be  issued. 
It  changed  the  terms  of  design  patents  to  three  and  one- 
half,  seven  or  fourteen  years  at  the  election  of  the  appli- 
cant, and  the  fees  to  ten,  fifteen  or  thirty  dollars  respec- 
tively. 

The  patent  Act  of  1870  repealed  the  Act  of  1861,  but 
made  very  little  change  in  the  former  design  law.  The 
sections  of  this  Act  of  1870  relating  to  design  patents 
became  sections  4929  to  4934  of  the  revised  statutes  in 
1874.  Design  patents  were  granted  under  these  sections 
of  the  revised  statutes  until  the  Act  of  May  9,  1902, 
amended  materially  section  4929  which  is  the  section 
under  which  design  patents  are  now  granted. 

The  laws  of  1842,  1861  and  1870  were  almost  identical 
in  their  definition  of  the  subject  matter  granted  protec- 


1 — The  early  Design  Patent  Acts  are  printed  in  full  as  foot  notes 
to  Chapter  1  of  Fenton  on  Designs.  They  are  reviewed  in  that 
chapter  with  some  detail. 


6  Patents  for  Designs 

tion.  Generally  speaking  the  articles  which  could  be  pat- 
ented under  these  laws  were  (1)  a  new  and  original  de- 
sign for  a  manufacture,  bust,  statue,  alto  relievo  or  bas- 
relief;  (2)  a  new  and  original  design  for  the  printing 
of  woolen,  silk,  cotton  or  other  fabrics;  (3)  a  new  and 
original  impression,  ornament,  pattern,  print  or  picture 
to  be  printed,  painted,  cast  or  otherwise  placed  on  or 
worked  into  any  article  of  manufacture;  and  (4)  any  new 
and  original  shape  or  configuration  of  any  article  of 
manufacture.  The  most  important  difference  between 
this  Act  of  1870  and  the  Acts  of  1842  and  1861,  and  the 
difference  which  for  a  time  caused  the  most  discussion, 
was  the  use  in  the  Act  of  1870  of  the  word  ' '  useful ' '  in  the 
clause  relating  to  the  shape  or  configuration  of  an  article 
of  manufacture.  This  word  appeared  in  the  Acts  of  1842 
and  1861  modifying  the  word  "pattern;"  in  the  Act  of 
1870  it  was  omitted  before  the  word  ''pattern,"  but  ap- 
peared, as  above  stated,  in  the  clause  relating  to  the  grant 
of  a  patent  for  the  shape  or  configuration  of  an  article  of 
manufacture. 

A  consideration  of  the  design  law  as  it  now  exists  will, 
it  is  believed,  show  that  the  scope  of  these  former  laws 
was  broader  than  is  the  present  law.  There  is  much  that 
might  have  been  said  in  favor  of  granting  a  design  patent 
for  a  surface  ornamentation  under  the  old  laws  that  is 
not  now  pertinent.  An  article  which  might  possess  a  new 
and  original  shape  might  not  be  an  ornamental  object. 
Could  it  not  be  more  forcibly  urged  that  such  an  article 
came  within  the  purview  of  the  old  law  than  within  the 
present  Act? 

In  the  Gorham  case^  the  court  said  the  design  law  was 
intended  to  encourage  ''  the  decorative  arts."  The  Pat- 
ent Office  had  in  the  Parkinson  case^  expressed  the  same 


1 — Gorham  Mfg.  Co.  v.  White,  14  Wall,  511. 
2—1871  C.  D.  251. 


Laws  Now  in  Force  '^ 

view.  This  interpretation  of  the  law  was  strictly  ad- 
hered to  by  the  Office  subsequent  to  the  decision  in  the 
Gorham  case  in  the  decision  in  the  case  of  ex  parte  Chas. 
A.  Seaman^ 

3.  Design  Patent  Laws  Now  in  Force. — The  laws  now 
in  force  which  relate  particularly  to  designs  are  as  fol- 
lows : 

''Revised  Statutes,  Section  4887.  No  person  otherwise 
entitled  thereto  shall  be  debarred  from  receiving  a  patent 
for  his  invention  or  discovery,  nor  shall  any  patent  be  de- 
clared invalid  by  reason  of  its  having  been  first  patented 
or  caused  to  be  patented  by  the  inventor  or  his  legal  rep- 
resentatives or  assigns  in  a  foreign  country,  unless  the 
application  for  said  foreign  patent  was  filed  more  than 
twelve  months,  in  cases  within  the  provisions  of  section 
forty-eight  hundred  and  eighty-six  of  the  Revised  Stat- 
utes, and  four  months  in  cases  of  designs,  prior  to  the 
filing  of  the  application  in  this  country,  in  which  case  no 
patent  shall  be  granted  in  this  country. 

"An  application  for  patent  for  an  invention  or  dis- 
covery or  for  a  design  filed  in  this  country  by  any  per- 
son who  has  previously  regularly  filed  an  application  for 
a  patent  for  the  same  invention,  discovery,  or  design  in 
a  foreign  country  which,  by  treaty,  convention,  or  law, 
affords  similar  privileges  to  citizens  of  the  United  States 
shall  have  the  same  force  and  effect  as  the  same  appli- 
cation would  have  if  filed  in  this  country  on  the  date  on 
which  the  application  for  patent  for  the  same  invention, 
discovery,  or  design  was  first  filed  in  such  foreign  coun- 
try, provided  the  application  in  this  country  is  filed  with- 
in twelve  months  in  cases  within  the  provisions  of  section 
forty-eight  hundred  and  eighty-six  of  the  Revised  Stat- 

1—4  o.  G.,  691. 


8  Patents  for  Designs 

iites,  and  within  four  months  in  cases  of  designs,  from  the 
earliest  date  on  which  any  such  foreign  application  was 
filed.  But  no  patent  shall  be  granted  on  an  application 
for  patent  for  an  invention  or  discovery  or  a  design  which 
had  been  patented  or  described  in  a  printed  publication 
in  this  or  any  foreign  country  more  than  two  years 
before  the  date  of  the  actual  filing  of  the  application  in 
this  country,  or  which  had  been  in  public  use  or  on  sale  in 
this  country  for  more  than  two  years  prior  to  such  filing. ' ' 


"Section  4929.  Any  person  who  has  invented  any  new, 
original,  and  ornamental  design  for  an  article  of  manu- 
facture, not  known  or  used  by  others  in  this  country  be- 
fore his  invention  thereof,  and  not  patented  or  described 
in  any  printed  publication  in  this  or  any  foriegn  country 
before  his  invention  thereof,  or  more  than  two  years  prior 
to  his  application,  and  not  in  public  use  or  on  sale  in  this 
country  for  more  than  two  years  prior  to  his  application, 
unless  the  same  is  proved  to  have  been  abandoned,  may, 
upon  payment  of  the  fees  required  by  law  and  other  due 
proceedings  had,  the  same  as  in  cases  of  invention  or 
discoveries  covered  by  section  forty-eight  hundred  and 
eighty-six,  obtain  a  patent  therefor. 

"Section  4930.  The  Commissioner  may  dispense  with 
models  of  designs  when  the  design  can  be  sufficiently 
represented  by  drawings  or  photographs. 

' '  Section  4931.  Patents  for  designs  may  be  granted  for 
the  term  of  three  years  and  six  months,  or  for  seven 
years,  or  for  fourteen  years,  as  the  applicant  may,  in  his 
application,  elect. 

"Section  4933.  All  the  regulations  and  provisions 
which  apply  to  obtaining  or  protecting  patents  for  inven- 


Act  of  February  4,  1887  9 

tions  or  discoveries  not  inconsistent  with  the  provisions 
of  this  Title,  shall  apply  to  patents  for  designs. 

******** 

^'Section  4934.     The  following  shall  be  the  rates  for 

patent  fees : 

******** 

"In  design  cases:  For  three  years  and  six  months,  ten 
dollars;  for  seven  years,  fifteen  dollars;  for  fourteen 
years,  thirty  dollars. ' ' 

Act  of  February  Uh,  1887 : 

"Be  in  enacted,  etc.  That  hereafter,  during  the  term 
of  letters  patent  for  a  design,  it  shall  be  unlawful  for  any 
person  other  than  the  owner  of  said  letters  patent,  with- 
out the  license  of  such  owner,  to  apply  the  design  secured 
by  such  letters  patent,  or  any  colorable  imitation  there- 
of, to  any  article  of  manufacture  for  the  purpose  of  sale, 
or  to  sell  or  expose  for  sale  any  article  of  manufacture 
to  which  such  design  or  colorable  imitation  shall,  with- 
out the  license  of  the  owner,  have  been  applied,  knowing 
that  the  same  has  been  so  applied.  Any  person  violating 
the  provisions,  or  either  of  them,  of  this  section,  shall  be 
liable  in  the  amount  of  two  hundred  and  fifty  dollars ;  and 
in-  case  the  total  profit  made  by  him  from  the  manufac- 
ture or  sale,  as  aforesaid,  of  the  article  or  articles  to 
which  the  design,  or  colorable  imitation  thereof,  has  been 
applied,  exceeds  the  sum  of  two  hundred  and  fifty  dol- 
lars, he  shall  be  further  liable  for  the  excess  of  such  profit 
over  and  above  the  sum  of  two  hundred  and  fifty  dollars ; 
and  the  full  amount  of  such  liability  may  be  recovered  by 
the  owner  of  the  letters  patent,  to  his  own  use,  in  any 
circuit  court  of  the  United  States  having  jurisdiction  of 
the  parties,  either  by  action  at  law  or  upon  a  bill  in  equity 
for  an  injunction  to  restrain  such  infringement. 

"Section  2.  That  nothing  in  this  act  contained  shall 
prevent,  lessen,  impeach,  or  avoid  any  remedy  at  law  or 


10  Patents  for  Designs 

in  equity  which  any  owner  of  letters  patent  for  a  design, 
aggrieved  by  the  infringement  of  the  same,  might  have 
had  if  this  act  had  not  been  passed ;  but  such  owner  shall 
not  twice  recover  the  profit  made  from  the  infringement. ' ' 

The  question  is  sometimes  raised  whether  the  general 
provisions  of  the  patent  laws  not  inconsistent  with  the 
laws  relating  to  designs  are  applicable  to  design  patents. 
This  appears  to  be  answered  clearly  in  the  affirmative. 
Even  prior  to  the  date  of  the  passage  of  the  section  of  the 
revised  statutes  which  makes  the  general  provisions  of 
the  patent  laws  applicable  to  design  patents,  (Section 
4933  Revised  Statutes)  it  was  suggested  by  a  good  au- 
thority that  they  were  applicable^. 


1 — Simonds  p.  206. 


Chapter  II. 

SUBJECT  MATTER  FOR  DESIGN  PATENT. 

4.  Some  Definitions  of  a  Design  Patent. — What  is  a 
''design"  within  the  meaning  of  this  term  as  used  in  the 
patent  laws?    Robinson's  definition  is: — 

"A  design  is  an  instrument  created  by  the  imposition 
upon  a  physicial  substance  of  some  peculiar  shape  or 
ornamentation  w^hich  produces  a  particular  impression 
upon  the  human  eye,  and  through  the  eye  upon  the 
mind^" 

Renwick  in  his  work  on  Patentable  Invention  defines 
a  design  as  follows : — 

' '  The  design  of  an  article  wdiatever  it  be,  is  the  appear- 
ance of  the  thing,  as  distinguished  from  its  structured" 

The  Circuit  Court  of  Appeals  for  the  Second  Circuit  in 
the  case  of  Rowe  v.  Blodgett  &  Clapp  Co.=^  said  :— 

' '  Patents  for  designs  are  intended  to  apply  to  matters 
of  ornament,  in  which  the  utility  depends  upon  the  pleas- 
ing effect  imparted  to  the  eye,  and  not  upon  any  new 
function  *  *  *  Design  patents  refer  to  appearances, 
not  utility.  Their  object  is  to  encourage  works  of  art  and 
decoration  which  appeal  to  the  eye,  to  the  esthetic  emo- 
tions, to  the  beautiful. ' ' 

Mr.  Pettit  has  made  this  interesting  statement  in  re- 
gard to  designs : — 

"A  design  is  a  delineation  of  form  or  figure,  either 
plain  or  solid,  a  shape  or  configuration.     The  construc- 


1 — Sec.  200. 

2 gee    71 

3_112  F.,'61;  98  O.  G.  1286;  1902  C.  D.  583. 


12  Patents  for  Designs 

tion  of  an  article  in  accordance  with  that  delineation  is 
the  materialization  of  the  conception  of  the  design.  Un- 
der the  decisions  in  design  cases  it  has  been  held  that  the 
Act  requires  that  the  shape  produced  shall  be  the  result 
of  industry,  effort,  genius  and  expense ;  and  also  requires 
that  the  shape,  form  or  configuration,  sought  to  be  se- 
cured, shall  also  be  new  and  original,  as  applied  to  an 
article  of  manufacture."^ 

The  Commissioner  of  Patents  in  1902  in  an  argument 
presented  to  the  Senate  Committee  in  support  of  the  bill 
Avhich  became  the  Act  of  May  9, 1902,  (Section  4929  of  the 
Eevised  Statutes  as  amended)  had  this  to  say  relative  to 
the  nature  of  a  design  patent : — 

''It  is  thought  that  if  the  present  bill  shall  become  a 
law  the  subject  of  design  patents  mil  occupy  its  proper 
philosophical  position  in  the  field  of  intellectual  produc- 
tion, having  upon  the  one  side  of  it  the  statute  providing 
protection  to  mechanical  constructions,  possessing  utility 
of  mechanical  function,  and  upon  the  other  side  the  copy- 
right law,  where  objects  of  art  are  protected,  reserving  to 
itself  the  position  of  protecting  objects  of  new  and  artis- 
tic quality  pertaining,  however,  to  commerce,  but  not  jus- 
tifying their  existence  upon  functional  utility.  If  the 
design  patent  does  not  occupy  this  position  there  is  no 
other  well-defined  position  for  it  to  take.  It  has  been 
treated  of  late  years  as  an  annex  to  the  statute  covering 
mechanical  cases,  since  the  introduction  of  the  word  ' '  use- 
ful" into  it.  If  is  thought  that  this  practice  should  no 
longer  continue^." 

The  Circuit  Court  of  Appeals  for  the  Seventh  Circuit 
in  the  case  of  Pelouze  Scale  &  Mfg.  Co.  v.  American 
Cutlery  Co.  et  aP  defined  a  design  as  follows : — 


1 — The  Law  of  Invention — Horace  Pettit,   Philadelphia,  January 
1,  1895. 

2 — Scientific  American,  May  24,  1902,  Val  86,  No.  21,  p.  361. 
3 — 102  F.  916. 


Oeiginal  13 

^'Design,  in  the  view  of  the  patent  law,  is  that  charac- 
teristic of  a  physical  substance  which,  by  means  of  lines, 
images,  configuration  and  the  like,  taken  as  a  whole, 
makes  an  impression,  through  the  eye  upon  the  mind  of 
the  observer.  The  essence  of  a  design  resides,  not  in  the 
elements  individually,  nor  in  their  method  of  arrange- 
ment, but  in  their  tout  ensemble,  in  that  indefinable  whole 
that  awakens  some  sensation  in  the  observer's  mind.  Im- 
pressions thus  imparted  may  be  complex  or  simple ;  in  one 
a  mingled  impression  of  gracefulness  and  strength,  in 
another  the  impression  of  strength  alone.  But  whatever 
the  impression,  there  is  attached  in  the  mind  of  the  ob- 
server, to  the  object  observed,  a  sense  of  uniqueness  and 
character. ' ' 

The  design  under  consideration  was  a  scale  frame. 

5.  Must  be  Original. — In  order  that  a  design  may  be 
patentable,  it  must  be  "original"  with  the  inventor;  that 
is,  it  must  not  be  obtained  from  another.  This  w^ord  as 
used  in  the  statute  is  not  synonymous  with  "new^"  The 
presumption  of  originality  arises  from  the  grant  of  a  de- 
sign patent  in  the  same  manner  as  it  does  from  the  issue 
of  the  other  class  of  patents,  usually  referred  to  as  "me- 
chanical patents"  in  constradistinction  to  "  design  pat- 
ents. ' ' 

6.  Design  Must  Be  Ornamental. — Although  it  was  gen- 
erally held  by  the  Patent  Office  and  the  Courts  before  the 
design  law  was  amended  by  the  Act  of  May  9,  1902,  that 
designs  to  be  patented  must  be  ' '  ornamental, ' '  this  word 
was  new  to  the  design  laws  when  used  in  the  amendatory 
Act  of  May  9, 1902.  It  was  clearly  the  desire  of  those  who 
secured  the  passage  of  this  amendatory  Act  to  lessen  the 
doubt  upon  the  question  of  what  was  proper  subject  mat- 


1 — Parkinson  1871  C.  D.,  251. 


14  Patents  foe  Designs 

ter  for  a  design  patent.  With  this  in  view  the  word  **  use- 
ful" was  omitted  and  the  word  "ornamental"  was  placed 
in  the  statute. 

7.  "Omamentar'  Defined. — The  term  "ornamental" 
as  used  in  reference  to  designs  indicates  an  object  which 
is  produced  for  the  purpose  of  giving  a  pleasing  appear- 
ance. This  may  result  from  surface  ornamentation,  from 
symmetrical  outline,  from  harmonious  arrangement  of 
parts,  from  balanced  effect  of  the  various  features  of  the 
design,  or  in  other  ways.  If  the  object  produced  is  beau- 
tiful, it  is  "ornamental"  within  the  meaning  of  the  stat- 
ute. A  thing  may  also  be  beautiful  and  therefore  orna- 
mental in  the  sense  here  used  if  it  is  grotesque,  bizarre,  or 
ludicrous.  The  design  is  "ornamental"  if  it  appeals  to 
the  esthetic  emotions.^  But  although  it  must  be  "a  thing 
of  beauty"  it  is  not  necessary  that  it  show  any  high  de- 
gree of  esthetic  excellence.  A  low  order  of  ornamen- 
tation is  under  the  law  entitled  to  encouragement  the 
same  as  a  low  order  of  invention,"  or  an  unpretentious 
degree  of  intellectual  or  artistic  merit". 

The  word  "ornamental"  was  substituted  for  the  word 
' '  artistic ' '  in  the  House  of  Representatives  on  the  recom- 
mendation of  the  committee  on  Patents,  the  word  "artis- 
tic" having  been  used  in  the  original  draft  of  the  bill 
which  became  the  Act  of  May  9,  1902^ 

There  are  many  articles  which  all  agree  are  ornamental 
objects  clearly  entitled  to  protection  under  the  design 


l_Rowe  V.  Blodgett  &  Clapp  Co.,  112  F.  61;  98  O.  G.  1286;  1902 
C.  D.  583;  Wright  v.  Lorenz  101  O.  G.  664;  1902  C.  D.  340;  Knothe, 
102  O.  G.,  1294;  1903  C.  D.  42;  Hartshorn,  104  O.  G.,  1395;  1903 
C.  D.,  170. 

2 — Diamond  Rubber  Co.  v.  Consolidated  Rubber  Tire  Co.  220  U. 
S.  429-435;   166  O.  G.  251;    1911  C.  D.  538. 

3 — Bleistein  et  al  v.  Donaldson  Lithographing  Co.  188  U.  S.,  239; 
102  O.  G.,  1553;   1903  C.  D.  650. 

4 — H.  R.  No.  1661,  57th  Cong.  1st  Session. 


Ornamental  15 

law,  wsuch  as  watch  cases,  spoons,  medals,  vases,  various 
kinds  of  glassware,  and  many  other  articles.  There  are 
other  articles  in  regard  to  which  there  may  be  strong 
doubt  whether  they  are  proper  subject  for  protection. 
The  adjudicated  cases  in  which  was  considered  the 
question  whether  the  particular  design  was  proper  sub- 
ject matter  for  protection  as  an  ornamental  object  are 
helpful  in  reaching  a  determination  of  the  meaning  of  the 
word  ' '  ornamental. ' ' 

A  box  for  fur  sets  was  held  patentable  as  a  design  in 
one  of  the  earliest  reported  Patent  Office  decisions^;  so 
also  was  a  rubber  eraser^',  and  a  damper  for  stove  pipes^. 

A  casing  for  a  disinfecting  apparatus  is  an  ornamental 
object^  as  is  a  grass  hook^  A  metal  sink'',  a  machine 
frame^,  a  casing  for  multicylinder  gas  engines^  and  a  face 
plate  for  vending  machines^,  have  all  been  held  by  the 
board  of  examiners-in-chief,  as  disclosed  by  the  patented 
files  ornamental  objects  entitled  to  be  protected  by  the 
issue  of  a  design  patent. 

8.  Design  Held  Not  Ornamental. — In  the  early  case 
of  ex  parte  Peter  G.  Parkinson^"  the  Commissioner  of 
Patents  changed  the  p>i"actice  which  had  prevailed  for 
some  time  which  he  designated  as  "not  only  liberal  but 
lax"  and  held  that  the  design  patent  laws  were  intended 
to  protect  "ornamental  articles  used  simpl>'  for  deco- 
ration." A  design  for  a  claw  hammer  was  not  such  an 
article.     This  decision  was  followed  by  the  decision  in 


1 — Crane,  1869  C.  D.,  7. 

2 — Bartholomew,  1869  C.  D.,  103. 

3 — Fenno,  1871  C.  D.,  52. 

4 — West  Disinfecting  Co.  v.  Frank  et  al,  149  P.,  423. 

5 — Earle  Mfg.  Co.  v.  Clarke  &  Parsons,  154  F.,  851. 

6 — Design  patent  40,  064,  Frank  H.  Caldwell. 

7 — Design  patent  42,  294,  E.  H.  Oderman. 

8 — Design   patent   41,   543,  W.   Kelly 

9 — Design  Patent  38,  762,  C.  C.  Travis. 

10—1871  C.  D.  251. 


10  Patents  for  Designs 

the  case  of  ex  parte  Seaman^  in  which  it  was  held  that  a 
lamp  chimney  cleaner  was  not  proper  subject  matter  for 
protection  under  the  design  patent  statutes,  as  it  was  not 
an  ornamental  object.  In  the  case  of  Williams  Calk  Co.  v. 
Kemmerer^,  in  considering  the  question  of  what  consti- 
tutes an  ornamental  design  the  court  said: — 

''We  think  the  design  patent  is  invalid.  Section  4929 
of  the  Eevised  Statutes  (U.  S.  Comp.  1901,  p.  3396)  was 
not  intended  to  embrace  a  patent  for  such  a  design  as  is 
set  forth  in  the  design  letters  patent  under  consideration. 
It  was  intended,  in  order  that  a  design  might  be  patent- 
able, that  it  should  of  itself,  as  an  artistic  configuration, 
present  something  new  and  useful  from  an  esthetic  point 
of  view.  Within  the  meaning  of  the  Act,  there  is  nothing 
artistic,  ornamental,  or  decorative  in  the  design  of  a 
horseshoe  calk ;  it  is  essentially  a  mechanical,  and  not  an 
esthetic,  device.  It  is  impossible  to  suppose  that  it 
should  be  bought  or  used  because  of  its  esthetic  features. 
Its  success  as  a  calk  would  depend  upon  its  useful,  and 
not  artistic  character." 

Again  in  the  case  of  Rose  Mfg.  Co.  v.  E.  A.  Whitehouse 
Mfg.  Co.'  it  was  held  that  patents  for  vehicle  number 
plate  supports  were  invalid.    The  court  stated : — 

''A  valid  design  patent  does  not  necessarily  result 
from  photographing  a  manufactured  article  and  filing  a 
reproduction  of  such  photograph  properly  certified  in  the 
Patent  Office.  The  designs  of  the  design  patents  in  suit 
are  for  the  most  part  alike.  No.  41,389  differs,  however, 
from  No.  41,388  in  having  braces  which  unquestionably 
strengthen  the  arm,  to  which  the  number  plate  is  attach- 
ed. It  is  not  only  apparent  that  this  is  their  function,  but 
it  is  also  established  to  be  such  by  the  evidence.    Indeed, 


1 — 4  o.  G.,  691 

2 — 145  F.  928. 
3 — 201   F.  926. 


Ornamental  17 

every  feature  of  these  patents  is  mechanical  and  function- 
al, and  not  ornamental.  Even  ordinar}^  rivet  heads  are 
made  to  appear  as  beautiful  circles  in  this  scheme  of  or- 
namentation. If,  moreover,  the  braces  or  supports  of 
patent  No.  41,389  were  intended  for  ornamentation,  they 
apparently  failed  in  their  mission,  but,  if  otherwise,  then 
every  piece  of  mechanism  can,  with  the  aid  of  photogra- 
phy and  the  machinery  of  the  Patent  Office,  be  readily 
crystallized  into  a  design  patent. ' ' 

In  the  case  of  Star  Bucket  Pump  Co.  \'.  Butler  Mfg. 
Co.-^  doubt  was  expressed  as  to  whether  a  pump  curb 
(patent  No.  28,190)  was  subject  matter  for  protection. 
The  court  thought  it  probably  was  not  proj)erly  associ- 
ated with  decorative  objects. 

The  bath  tub  seat  shown  in  design  patent  No.  29,993, 
was  held  to  have  nothing  to  conmiend  it  to  tlie  eye  as  an 
ornamental  object." 

The  Patent  Office  has  held  that  a  shade  roller^,  a  jar  of 
the  character  shown^,  and  a  side  frame  for  car  trucks^, 
are  not  ornamental  objects,  and  patents  for  these  designs 
were  refused. 

The  Federal  courts,  have  held  invalid,  ])atents  issued 
for  a  syringe^,  a  belt  fastener  plate^  an  insulating  plug 
for  electric  line  supports^,  a  washer  for  thill  couplers^,  a 
bottle  of  the  design  shown^^,  and  a  lamp  bracket^^ 

The  last  two  were  held  invalid  because  not  pleasing, 
artistic  objects;  but  it  is  gathered  from  the  decisions 
either  that  thev  were  not  novel  in  view  of  the  existing 


1 — 198  F.  857. 

2 — Buffalo  Specialty  Co.  v.  Art  Brass  Co.,  202  F.  760. 

3 — Hartshorn,  104  O.  G.,  1395;  1903  C.  D.  170. 

4 — Wright  V.  Lorenz,  101  O.  G.  664;   1903  C.  D.  340. 

5 — Bettendorf,  127  O.  G.  848;  1907  C.  D.  79. 

6 — Marvel  v.  Pearl,   114  F.  9  46. 

7 — Eaton  V.  Lewis,  115  F.  635. 

8 — Williams  v.  Syracuse  and  S.  R.  Co.,  161  F.  571. 

9 — Bradley  v.  Eccles,  126  F.  9  4  5. 
10 — Chas.  Boldt  Co.  v.  Turner  Bros.  Co.,  199  F.  139-144. 
11 — Note  to  Bolte  &  Weyer  Co.  v.  Knight  Light  Co.,  180  F.  412. 


18  Patents  for  Designs 

forms  or  that  it  did  not  involve  invention  to  produce 
these  objects  in  view  of  the  art  disclosed.  It  can  not  be 
safeh"  held  on  these  decisions  that  bottles  and  lamps  are 
not  proper  subject  matter  for  protection  as  ornamental 
objects. 

9.  Article  For  Obscure  Use. — It  apparently  is  as- 
sumed in  the  decisions  holding  a  design  invalid  because 
for  obscure  use  that  such  an  article  is  not  ornamental. 
Does  this  necessarily  follow?  Why  may  not  a  design 
which  is  covered  up  and  which  is  never  seen  while  in  use 
possess  a  high  degree  of  artistic  excellence?  This  ques- 
tion is  probably  entirely  a  moot  question  for  the  articles 
which  are  used  in  an  obscure  manner  are  usually  without 
any  claim  to  ornamental  value. 

An  insulating  plug  for  electric  lines  was  said  to  be  for 
an  obscure  use  as  well  as  not  ornamental  and  therefore 
the  patent  issued  for  it  was  held  invalid.^  A  metal  spool 
for  use  in  a  typewriter  is  an  article  for  obscure  use  and  a 
patent  for  this  was  decided  to  have  been  improperly  is- 
sued.-' The  question  whether  a  vehicle  number  plate  sup- 
port is  not  obscured  in  use,  and  is  therefore  not  subject 
matter  for  a  design  patent  was  raised  in  the  case  of  Rose 
Mfg.  Co.  V.  E.  A.  Whitehouse  Mfg.  Co.^  but  was  not  de- 
cided. A  horseshoe  calk"*  and  a  washer  for  thill  couplers^ 
are  not  articles  for  which  a  valid  patent  can  be  issued  in 
accordance  with  the  views  expressed  in  the  cases  referred 
to. 

10.  "Useful." — It  has  been  pointed  out  that  the  word 
"useful"  was  first  used  in  the  design  patent  Act  of  1870 
as  modifying  the  term  "shape  or  configuration "^     This 


1 — wiUiams  v.  Syracuse  and  S.  R.  Co.,  161  F.  571. 
:; — Wagner  Typewriter  Co.  v.  Webster  Co.,  144  F.  405. 
3 — 201  F.  926. 

4_Rowe  V.  Blodgett  &  Clapp  Co.,  112  F.  61;   1902  C.  D.  583;  and 
Williams  Calk  Co.  v.  Kemmerer  et  al.,  145  F.  928. 
r, — Bradley  v.  Eccles,  126  F.  945. 
6 — Section  2. 


"Useful"  19 

word  caused  a  great  deal  of  discussion  and  was  consid- 
ered in  many  decisions^  To  get  rid  of  this  difficulty  in 
construing  this  word  as  applied  to  design  patents  the 
Committee  on  Patents  of  the  House  of  Representatives 
in  reporting  the  bill  which  became  the  Act  of  May  9, 
1902  said  :— 

' '  Under  the  existing  statute  the  United  States  Supreme 
Court  has  said  that  consideration  may  be  given  to  the 
word  'useful'  in  the  granting  of  a  patent.  Other  courts 
in  attempting  to  define  what  consideration  shall  be  given 
to  the  word  'useful',  define  it  as  'adaptation  to  produc- 
ing pleasant  emotions'.  This  has  nothing  whatever  to 
do  with  mechanical  utility. 

This  state  of  affairs  has  brought  into  the  Patent  Office 
much  contention  and  some  confusion.  To  avoid  these 
difficulties  and  to  make  plain  the  distinction  between  me- 
chanical patents,  where  'utility'  is  an  essential  element, 
and  design  patents,  where  'utility'  has  nothing  to  do  with 
it,  but  where  ornamentation  is  the  proper  element  of  con- 
sideration, the  amendment  offered  by  this  bill  is  pro- 
posed."^ 

A  majority  of  the  courts  which  have  decided  what 
meaning  should  be  given  to  this  word  "useful"  as  used 
in  the  Act  of  1870  and  section  4929  of  the  Revised  Stat- 
utes before  that  section  was  amended,  have  held  that  it 
referred  to  the  usefulness  resulting  from  creating  an  or- 
nament or  a  beautiful  thing.  In  the  case  of  the  Westing- 
house  Co.  V.  Triumph  Co.^  the  Court  of  Appeals  of  the 
Sixth  Circuit  said : — 


1 — The  views  expressed  in  the  decisions  in  the  case  of  Crane, 
1869  C.  D.,  7;  Bartholomew,  1869  C.  D.,  103  and  Penno,  1871  C.  D. 
52,  on  the  side  of  liberal  construction  are  opposed  by  the  rulings  in 
the  cases  of  Parkinson  1871  C.  D.,  251  and  Seaman,  4  O.  G.,  691. 
In  1879,  in  the  case  of  ex  parte  Shoeninger,  15  O.  G.,  384;  1878  C. 
D.  128,  it  was  ruled  that  if  a  design  was  new,  original  and  also  use- 
ful it  was  patentable  even  if  not  ornamental,  or  beautiful. 

2 — H.  R.,  #1661,  57th  Cong.  1st  Session. 

3 — 97  F.  99;  90  O.  G.,  603;   1900  C.  D.  219. 


20  Patents  for  Designs 

*'We  think  it  very  doubtful  whether  the  word  'useful', 
introduced  by  revision  of  the  patent  laws  into  the  statute, 
is  to  have  the  same  meaning  as  it  has  in  the  section  pro- 
viding for  patents  for  useful  inventions.  The  whole  pur- 
pose of  Congress,  as  pointed  out  by  Mr.  Justice  Strong, 
speaking  for  the  Supreme  Court,  in  the  case  of  Gorham 
Co.  V.  White  (14  Wall,  511)  was  to  give  encouragement 
to  the  decorative  arts.  It  contemplated  not  so  much  util- 
ity as  appearance.  We  must  infer  that  the  term  'useful' 
was  inserted  merely  out  of  abundant  caution  to  indicate 
that  things  which  were  vicious  and  had  a  tendency  to  cor- 
rupt and  in  this  sense  were  not  useful,  were  not  to  be  cov- 
ered by  the  statute ' '. 

The  Court  of  Appeals  of  the  District  of  Columbia  show- 
ed that  it  held  a  somewhat  different  view  in  the  case  of 
in  re  Tournier^    It  said: — 

''But  since  the  introduction  of  the  word  'useful'  into 
the  statute,  the  Supreme  Court  of  the  United  States  has 
held,  in  more  than  one  case,  that  in  certain  classes  of  de- 
signs embraced  by  the  statute  in  addition  to  the  mere 
esthetical  or  artistic  effect  of  the  design  upon  the  senses 
of  the  spectator,  the  element  of  functional  utility  may  be 
considered  in  considering  the  question  of  the  patentabil- 
ity of  the  design  claimed.  (Lehnbeuter  v.  Holthans,  1882 
d  D.,  263;  105  U.  S.,  94;  Smith  v.  Whitman  Saddle  Co., 
1893  C.  D.,  324;  148  U.  S.,  674). 

We  do  not,  however,  understand  the  court  as  intending 
to  go  further  than  this,  and  to  hold  that  functional  utility 
is  to  be  regarded  as  a  controlling  or  even  an  essential 
element  in  a  design  patent.  For  if  so,  the  design  patents 
would  virtually  be  placed  upon  the  same  footing  and  with 
the  same  requirements  of  patents  for  mechanical  inven- 
tions." 


1 — 17  App.  D.  C.  481;   94  O.  G.  2166;   1901  C.  D.  306. 


''Useful"  21 

These  decisions  were  all  rendered  before  the  design 
Act  was  amended  by  the  elimination  of  the  word  ''use- 
ful" and  the  substitution  of  the  word  "ornamental". 

What  part  does  functional  utility  now  play  in  the  con- 
sideration of  design  patents? 

In  the  decision  in  the  case  of  ex  parte  Knothe^  render- 
ed soon  after  the  amendment  of  the  design  Act  the  Com- 
missioner of  Patents  said : — 

' '  It  has  finally  been  settled,  however,  that  designs  refer 
to  appearance  and  not  to  mechanical  utility"    *     *    *    * 

The  Revised  Statutes  provide  protection  to  the  invent- 
or of  a  new  manufacture  which  is  useful  under  Sec.  4886 
and  to  the  inventor  of  an  ornamental  design  for  an  article 
of  manufacture  under  Sec.  4929  within  like  limitations 
relating  to  prior  knowledge  or  use,  patenting  or  publica- 
tion, public  use  or  sale,  and  abandonment.  These  two 
sections,  4886  and  4929,  cover  distinct  subject  matters  of 
invention.  These  distinct  subject-matters  may  both  be 
present  in  a  single  article  of  manufacture  or  either  may 
be  present  in  the  absence  of  the  other". 

To  the  same  effect  is  the  ruling  by  the  Commissioner 
of  Patents  in  the  case  of  ex  parte  Hartshorn^ ;  ex  parte 
Kern^ ;  ex  parte  Nickel  and  Crane'*,  and  ex  parte  Betten- 
dorf^.  In  the  decision  in  the  Hartshorn  case  supra,  it  is 
brought  out  that  the  fact  that  the  shade  roller  under  con- 
sideration was  not  only  created  for  a  functional  purpose, 
but  that  this  particular  article  did  not  contain  any  em- 
bellishment. It  was  the  fact  that  there  was  no  ornamen- 
tation present  which  rendered  the  design  unpatentable. 

There  are  several  cases  which  hold  that  the  question  of 
use  does  not  enter  into  consideration  in  designs^. 


1 — 102  O.  G.,  1294;  1903  C.  D.  42. 

2 — 104  O.  G.,  1395;  1903  C.  D.  170. 

3 — 105  O.  G.,  2061;  1903  C.  D.  292. 

4 — 109  O.  G.,  2441;  1904  C.  D.  135. 

5 — 127  O.  G.,  848;  1907  C.  D.  79. 

6 — Segelhorst,  109  O.  G.,  1887;  1904  C.  D.  125;  Hess,  19  Gour., 
74-27.  Sherman,  147  O.  G.,  237;  1909  C.  D.  170.  Mygatt,  186  O. 
G.,  987.  Mygatt,  188  O.  G.,  1055. 


22  Patents  for  Designs 

A  rather  close  distinction  is  shown  in  the  cases  of  in  re 
Tournier\  and  in  re  Sherman^.  In  the  former,  decided 
while  the  word  ''useful"  was  still  in  the  statute,  the  court 
said  that  functional  utility  was  not  to  be  regarded  "as  a 
controlling  or  even  as  an  essential  element  in  a  patent  for 
a  design".  In  the  latter  the  same  court  said  in  a  case 
which  arose  after  the  design  law  had  been  amended  by 
the  elimination  of  the  word  "useful",  and  the  substitu- 
tion of  the  word  "ornamental",  that  "in  a  close  case 
utility  may  be  given  some  consideration".  It  would  ap- 
pear that  if  the  utilitarian  aspect  of  a  design  was  in  a 
close  case  held  sufficient  to  justify  upholding  the  patent, 
that  the  functional  utility  in  that  case  controlled,  for  it  is 
hard  to  see  wdiy  an  element,  the  consideration  of  which, 
results  in  sustaining  the  validity  of  a  design  must  not  be 
considered  as  essential. 

A  design  patent  used  as  a  gambling  device  is  not  valid. 
The  principles  applicable  to  mechanical  patents  to  the 
effect  that  the  patent  laws  do  not  uphold  an  invention 
which  is  injurious  to  the  health,  morals  or  good  order  of 
the  community  apply  to  designs^  A  design  patent  for  a 
casing  for  a  coin  controlled  machine  which  had  been  used 
as  a  gambling  device  was  held  invalid^. 

11.  Mechanical  Function. — The  mechanical  means 
used  to  accomplish  a  certain  purpose  can  only  be  covered 
by  a  mechanical  patent^.  Patents  have  repeatedly  been 
refused,  or  held  void  when  issued,  if  the  only  distinguish- 
ing feature  is  the  mechanical  form  or  function^. 

The  fact,  however,  that  a  design  is  useful,  if  it  is  an  or- 
namental object,  does  not  affect  its  patentability  as  such^. 

1 — 17  App.  D.  C,  481;  94  O.  G.,  2166;  1901  C.  D.  306. 

2 — 35  App.  D.  C,  100;  154  O.  G.,  839;  1910  C.  D.  125. 

3 — Bedford  v.  Hunt  F.  C.  1217;  Device  Co.  v.  Lloyd,  40  F.  89. 

4 — Reliance  Novelty  Co.  v.  Dworzek,  80  F.,  902. 

5 — Royal  Metal  Mfg.  Co.  v.  Art  Metal  Works,  121  F.  128. 

6 — Roberts  v.  Bennett,  136  F.  193.  Lane  Bros.  Co.  v.  Wilcox  Mfg. 
Co.,  141  F.  1000.  Hess  Jr.,  19  Gour.,  74-27.  Johnson,  159  O.  G., 
992;  1910  C.  D.  192.     Mygatt,  186  O.  G.  987. 

7 — Mygatt  v.  Zalinski  et  al.,  138  F.  88. 


Manufacture  23 

A  claim  in  a  design  application  which  relates  to  the 
mechanical  fnnction  is  not  allowable^ 

12.  Article  of  Manufacture. — A  "mechanical"  patent 
as  distinguished  from  a  design  patent,  is  granted  for  an 
art,  machine,  manufacture  or  composition  of  matter;  a 
design  patent,  by  the  terms  of  section  4929  Revised  Stat- 
utes, is  limited  to  an  article  of  manufacture. 

In  the  case  of  Parkinson^  the  Commissioner  of  Patents 
said:  "By  'article  of  manufacture'  as  used  in  this  sec- 
tion, the  legislature  meant  only  ornamental  articles ;  art- 
icles used  simply  for  decoration".  The  important  part 
of  this  statement  is  that  a  manufacture  is  referred  to  as 
an  "article."  In  the  case  of  ex  parte  Wm.  Whyte^  an 
alleged  design  for  a  shield  or  escutcheon  was  under  con- 
sideration. In  discussing  the  provision  of  the  Act  of 
1870  then  in  effect,  granting  design  patents  for  '  *  any  new 
and  useful  impression,  ornament,  pattern,  print,  or  pic- 
ture to  be  printed,  painted,  cast,  or  otherwise  placed  on 
or  worked  into  any  article  manufacture,  the  Commis- 
sioner said : 

' '  There  can  be  but  little  doubt  that,  in  the  enumeration 
of  subjects  for  design  patents  as  contained  in  the  clause 
of  the  statute  above  quoted,  regard  was  had  to  the  ex- 
ternal ornamentation  of  articles  of  manufacture;  and 
that  to  this  end  it  was  the  intent  of  the  law  that  the  va- 
rious designs  should  be  so  affixed  to  the  manufactured 
article,  or  so  wrought  into  their  texture  as  to  become  in 
effect  a  part  of  them.  They  were  not  intended  to  sub- 
serve merely  a  temporary  purpose — such,  for  instance, 
as  to  distinguish  the  article  by  their  presence  upon  it  un- 
til it  should  have  passed  into  the  hands  of  the  consumer, 
and  until  obliterated  by  the  natural  and  gradual  deterio- 
ration resulting  from  use. " 


1 — Mygatt,  188  O.  G.  1055. 
2 — 1871,  C.  D.,  251. 
3 — 1871,  C.  D.,  304. 


24  Patents  for  Designs 

This  decision  is  important  in  that  it  shows  that  at  a 
time  when  the  design  statute  permitted  the  granting  of  a 
patent  for  an  ornament,  a  picture,  or  similar  article  placed 
on  or  worked  into  an  article  of  manufacture,  the  statute 
was  held  to  mean  that  the  ornamentation  of  whatever 
character  must  be  a  part  of  the  article.  Throughout  the 
early  decisions  occur  the  words  ' '  definite  article  of  manu- 
facture." In  the  Whyte  case,  supra,  the  Commissioner 
concluded  that:— 

'*In  the  absence  from  the  specification  of  all  mention 
of  the  articles,  if  any,  upon  which  it  is  proposed  to  place 
the  design  as  an  ornamentation,  and  to  which  it  would  be 
adapted  for  such  a  purpose,  and  upon  the  intrinsic  evi- 
dence of  the  design  itself,  it  must  be  held  that  it  is  really 
intended  as  a  trademark". 

In  the  case  of  ex  parte  Wm,  King\  decided  soon  after 
the  trademark  Act  of  1870  was  passed,  and  in  which  it 
was  held  that  a  trademark  could  not  be  patented  as  a  de- 
sign, in  discussing  the  only  provision  of  the  Statute  un- 
der which  it  might  be  possible  to  patent  an  ornamental 
design  which  was  not  applied  to  any  particular  goods, 
that  is,  the  provision  "any  new  and  original  impression, 
ornament,  etc.",  the  Commissioner  said:  "This  manifest- 
ly refers  to  the  external  ornamentation  of  manufactured 
articles,  and  it  requires,  first,  a  specific  article  of  manu- 
facture to  be  ornamented;  and  second,  an  impression, 
ornament,  pattern,  print,  or  picture  to  be  placed  upon  it. ' ' 

In  the  Wliyte  case  this  ruling  is  referred  to  with  ap- 
proval, with  this  comment: — 

"It  is  not  recalled  that  there  is  any  adjudication  of  the 
Courts  upon  the  validity  of  a  design  patent,  which  con- 
tains no  specification  of  the  class  of  goods  to  which  the 
design  is  applicable ' '. 

1 — 1870  C.  D.,  109. 


Manufacture  25 

The  views  expressed  in  these  early  cases  were  subse- 
quently followed.  In  the  case  of  ex  parte  Gerard^  it  was 
announced  that: — 

"The  invention  which  is  the  subject  of  the  design 
patent  cannot  exist  separate  and  apart  from  the  article 
of  manufacture." 

In  1898  in  the  case  of  ex  parte  Hill  and  Renner^  in 
which  an  attempt  was  made  to  patent  a  design  for  a 
show  card  holder,  two  forms  being  presented,  the  Com- 
missioner criticised  the  disclosure  on  the  ground  that 
the  application  was  not  limited  to  a  ''single  article  of 
manufacture"  as  required  by  the  statute.  In  the  case 
of  ex  parte  Amberg^  the  applicant  desired  a  patent  for 
a  "design  for  banners,  badges,  buttons,  and  other  deco- 
rative devices  and  displays."  In  other  words,  he  de- 
sired a  patent  for  the  artistic  surface  ornamentation 
which  he  had  invented.  The  issue  was  here  met  directly 
by  Commissioner  Duell,  who  said : — 

"Granting  the  applicant's  contention  is  correct  that 
the  design  is  a  surface  ornamentation  that  may  be  placed 
on  other  articles  than  that  shown,  yet  from  his  descrip- 
tion this  surface  ornamentation  has  been  applied  or  pro- 
duced only  on  a  flag  or  banner.  Applicant  has  not  in- 
vented or  produced  this  design  on  any  other  article  of 
manufacture  than  a  flag  or  banner.  He  should  confine 
the  title  of  the  invention  and  the  claim  to  what  he  has 
produced  and  shown  and  described  in  his  application, 
leaving  to  the  courts  the  question  as  to  whether  he  may 
use  it  on  any  other  article  than  a  banner  or  flag  or 
whetlier  any  other  party  using  it  on  other  devices  would 
infringe  his  design  .  This  is  the  gist  of  the  present 
practice. ' ' 

1 — 43  o.  G.,  1235;  1888  C.  D.,  37. 
2—82  O.  G.,  1988;  1898  C.  D.,  38. 
3—84  O.  G.,  507;  1898  C.  D.,  117. 


26  Patents  for  Designs 

To  the  same  effect  is  the  ruling  in  the  cases  of  ex  parte 
Hartman^;  ex  parte  Hewitson^,  and  ex  parte  Reming- 
ton^. 

This  interpretation  of  the  statute  was  in  various  de- 
cisions regarded  as  in  accord  with  the  ruling  of  the 
Supreme  Court  in  the  Gorham  case  in  which  this  state- 
ment occurs : — 

"The  apperance  may  be  the  result  of  peculiarity  of 
config-uration,  or  of  ornament  alone,  or  of  both  conjoint- 
ly, but,  whatever  way  produced,  it  is  the  new  thing  or 
product  which  the  patent  law  regards. ' ' 

In  a  number  of  cases  the  question  has  been  raised 
whether  a  certain  definite  article  is  an  ' '  article  of  manu- 
facture." In  the  case  of  Crier  v.  Innes^  such  an  article 
was  defined  in  this  manner: — 

''It  is  next  contended  that  the  patent  is  invalid  be- 
cause it  relates  to  a  monument  which  is  not  a  "  manufac- 
ture" within  the  meaning  of  the  design  patent  statute. 
We  think  this  contention  not  well  founded.  A  monument 
is  manufactured,  and  in  our  opinion,  is  a  'manufacture' 
and  not,  as  urged  by  the  defendants,  a  species  of  archi- 
tecture. It  comes  within  the  dictionary  definition  of  the 
former  term,  and  if  we  go  beyond  that  and  look  at  trade 
usage,  we  find  in  the  present  record  the  defendants '  own 
witnesses  describing  themselves  as  monument  'manu- 
facturers, '  and  speaking  of  manufacturing  monuments. ' ' 

The  term  "manufacture"  may  not  be  extended  to 
include  a  class  of  goods.  The  term  "table-ware"  is 
too  indefinite^. 


1 — 84  O.  G.,  648;    1898  C.  D.,  120. 

2 — 87  O.  G.,  515;  1899  C.  D.,  77. 

3_114  o.  G.,  761;  1905  C.  D.,  28. 

4—170  F.,  324. 

5_Proeger  57  O.  G.,  546;    1891  C.  D.,  182. 


Manufacture  27 

In  holding  that  a  dwelling  house  is  not  a  "manu- 
facture," and  therefore  not  entitled  to  protection  under 
the  design  patent  act,  the  Commissioner  of  Patents  in 
the  case  of  ex  parte  Lewis^  said: — 

"The  word  'manufacture'  must  be  limited  to  manufac- 
tured articles,  that  is  to  say,  articles  made  by  hand,  ma- 
chinery, or  art  from  raw  or  prepared  materials,  and  any 
construction  that  will  make  it  include  a  dwelling  house 
or  any  other  article  of  realty  would  involve  such  a  de- 
parture from  the  received  signification  of  the  word  as 
employed  in  statutes  relating  to  patents  as  to  be  wholly 
inadmissible". 

In  the  case  of  Graff,  Washbourne  &  Dunn  v.  Webster^  in 
holding  a  design  patent  for  a  border  section  of  a  dish 
valid  some  apparent  force  is  given  to  the  view  that  a 
fragment  is  patentable.  In  that  case  the  court  said  it 
would  seem  that  an  inventor  could  patent  some  compo- 
nent detail  of  his  design.  The  court  may,  however,  have 
regarded  the  border  section  as  an  independent  article 
of  manufacture. 

The  Circuit  Court  of  Appeals  of  the  Second  Circuit 
held  the  Tomkins  patent  for  a  design  for  a  bed  spring 
invalid  for  lack  of  patentability  or  not  infringed^  Al- 
though the  Court  did  not  directly  so  rule,  the  question  is 
worthy  of  serious  consideration  whether  the  invalidity 
did  not  result  in  reality  from  the  failure  of  the  inventor 
to  disclose  in  the  drawing  or  describe  in  the  specification 
a  complete  article. 

It  is  difficult  however  to  reconcile  the  practice  of  issu- 
ing some  design  patents  with  the  rulings  of  the  Office  re- 
quiring a  definite  article  of  manufacture  to  be  specified. 
Patents,  for  instance,  have  been  issued  for  a  design  for 
the  "backs  of  playing  cards". 

1_54  o.  G.,  1890;   1891  C.  D.  61. 
2 — 189  F.  902. 

3 James  E.  Tomkins  Co.  v.  New  York  Woven  Wire  Mattress  Co., 

159  F.  133. 


28  Patents  for  Designs 

The  very  recent  decision  in  the  case  of  ex  parte  Fulda^ 
changes  the  practice  relative  to  that  class  of  designs 
which  reside  in  superficial  ornamentation.  In  this  case 
the  Commissioner  said  : — 

''Where  the  design  is  for  the  form  or  configuration  or 
involves  the  relative  proportions  of  parts  of  an  article 
of  manufacture,  said  article  of  manufacture  must  neces- 
sarily be  disclosed  in  the  application.  Where,  however, 
as  in  the  present  case,  the  design  is  for  an  ornament 
adapted  to  be  applied  to  any  article  of  manufacture,  I 
fail  to  find  in  the  statute  any  requirement  that  the  ap- 
plicant shall  disclose  his  design  as  applied  to  some  par- 
ticular definite  article  of  manufacture,  as  required  by 
the  Examiner." 

Even  before  the  decision  in  the  case  of  ex  parte  Fulda, 
supra,  was  rendered,  patents  were  issued  in  which  the 
specification  recites  that  no  novelty  is  claimed  in  the 
shape  of  the  articled  Surface  decoration  is  the  orna- 
mental feature  of  these  designs. 

13.  Machine  Not  Patentable  As  a  Design. — The  terms 
''art",  "machine",  "manufacture",  and  "composition 
of  matter"  have  a  well  recognized  meaning  in  the  patent 
laws.  While  section  4886,  Revised  Statutes  permits  the 
grant  of  a  patent  for  any  new  invention  in  any  of  them, 
section  4929  names  only  a  "manufacture"  as  proper 
subject  matter  for  a  design  patent.  A  machine  there- 
fore is  not  proper  subject  matter  for  a  design  patent. 
This  has  been  repeatedly  so  held  in  Patent  Office  de- 
cisions.^ 

There  are  some  cases  in  which  the  question  whether  a 
device  is  a  manufacture  or  a  machine  is  a  close  one. 
Some  aid  in  determining  it  may  be  obtained  by  consider- 
ing some  of  the  decisions  on  this  question. 

1 — 194  o.  G.  549    (August,  1913). 
2 — Patents  44421,  Smith,  and  44381,  Owen. 

3_Adams,  84  O.  G.,  311;  1898  C.  D.  115;  Steck  98  O.  G.,  1228; 
1902  C.  D.  9. 


Machine  Not  Patentable  29 

In  ex  parte  Sraith^  it  was  decided  that  an  atomizer  was 
not  proper  subject  matter  for  protection  under  the  de- 
sign statute  because  of  the  presence  of  movable  parts 
which  when  moved  changed  the  appearance  of  the  de- 
vice. It  apparently  was  the  view  of  the  Commissioner 
that  if  the  movable  handle  was  removed  it  would  not  be 
objectionable  as  presented  and  a  patent  was  subsequent- 
ly issued  on  this  application  for  an  atomizer  body^.  In 
the  case  of  ex  parte  Tallman-"^  a  design  patent  for  a  can 
opener  was  refused  on  the  ground  that  the  knife  forming 
a  part  of  it  was  a  movable  part  and  when  shifted  the 
shape  or  contour  of  the  article  was  changed.  A  patent 
for  a  can  opener  body  was  subsequently  issued  on  this 
application*.  A  pair  of  tongs  consisting  of  two  members 
of  the  same  shape  pivoted  together  is  an  operative  de- 
vice and  not  within  the  purview  of  the  design  laws^  In 
this  case  the  Commissioner  stated : 

"If  applicants  have  invented  and  produced  anything 
that  is  novel,  it  is  not  a  pair  of  tongs,  but  the  shape  or 
configuration  of  a  member  or  jaw  of  a  pair  of  tongs.  The 
description  and  claim  should  be  limited  to  this". 

In  the  case  of  ex  parte  Adams,  and  ex  parte  Steck, 
supra,  a  design  for  truck  side  frames  and  for  a  frame 
for  water  towers,  respectively,  were  held  not  patentable 
in  that  they  were  apparatuses  having  movable  parts. 

The  design  patent  to  Hill  No.  27,272,  for  a  furniture 
support  consisting  of  two  parts  which  were  joined  to- 
gether in  a  way  that  permitted  them  to  be  moved,  was 
held  valid  in  the  case  of  Chandler  Adjustible  Chair  and 
Desk  Co.  V.  Heywood  Bros,  and  Wakefield  Co.^  The 
Court  in  this  case  thought  that  the  broad  proposition 


1 — 81  o.  G.,  969;   1897  C.  D.  170. 

2 — Design  Patent  No.  30,293,  DeWane  B.  Smith. 

3 — 82  O.  G.,  337;   1898  C.  D.  10. 

4 — Design  Patent  28,232,  Tallman. 

5__Kapp,  83,  O.  G.,  1993;  1898  C.  D.  108. 

6 — 91,  F.  163. 


30  Patents  for  Designs 

that  the  design  law  was  not  intended  to  apply  to  struc- 
tures having  movable  parts  was  not  supported  by  any 
judicial  decisions,  and  that  to  hold  this  desk  support, 
made  up  of  two  parts  which  might  be  raised  or  lowered 
to  vary  the  height  of  the  desk,  was  not  a  ''manufacture" 
was  an  unwarrantable  and  unreasonable  limitation  of 
the  term  as  used  in  the  statute. 

14.  Superficial  Ornamentation. — Some  forms  of  sur- 
face ornamentation  are  applicable  to  many  different  ob- 
jects. The  question  then  arises  why  a  patent  for  a  par- 
ticular ornamentation  should  not  be  granted  so  that  the 
inventor  will  not  be  directly  or  indirectly  limited  to  the 
use  of  his  surface  decoration  on  any  particular  object. 
An  ornamentation  which  might  embellish  a  door  knob 
may  be  equally  applicable  to  a  curtain  pole,  a  lighting 
fixture,  a  handle,  a  piece  of  glassware  and  many  other 
articles.  Why  should  he  be  compelled  to  specify  any 
article  wiien  by  doing  this  he  might  limit  the  right  to  the 
use  of  his  invention,  for  it  is  possible  that  another  might 
use  his  decoration  on  an  article  so  different  from  the 
one  specified  by  the  inventor  that  a  court  would  not  hold 
the  second  user  an  infringer.  This  is  improbable  but  it 
is  a  reasonable  contingency  against  which  an  inventor 
may  well  desire  to  protect  himself.  The  answer  of  the 
Patent  Ofiice  to  these  questions  has  been  that  it  is  neces- 
sary under  the  statute  to  point  out  definitely  an  article 
of  manufacture  (See  Section  12). 

There  is  some  interesting  discussion  of  this  question 
in  the  cases  of  ex  parte  King^  and  ex  parte  Wm.  Whyte^. 
In  both  of  these  cases  there  were  under  consideration 
ornamental  designs  which  the  Commissioners  who  con- 
sidered the  cases  thought  were  trademarks.  They  were 
however  decorations  of  the  character  which  if  placed 
upon  a  badge,  emblem  or  similar  article,  would  probably 
be  regarded  as  proper  subject  matter  for  a  design  pat- 


1 — 1870  C.  D.,  109. 

2 — 1871  C.  D.,  304-306. 


Superficial  Ornamentation  31 

ent.  In  both  of  these  cases  the  subject  matter  of  the  ap- 
plications was  regarded  as  a  trademark,  but  the  direct 
statement  is  made  that  for  a  design  patent  to  be  valid 
it  must  specify  the  particular  article  to  be  decorated. 
These  decisions  rendered  at  a  time  when  the  law  enumer- 
ated as  one  of  the  subjects  of  protection  ''any  new  and 
original  impression,  ornament,  pattern,  print,  or  picture, 
to  be  printed,  painted,  cast  or  otherwise  placed  on  or 
worked  into  any  article  of  manufacture",  are  of  some 
value  in  reaching  a  correct  conclusion  on  the  question 
whether  a  patent  for  surface  ornamentation,  per  se,  is 
valid. 

Mr.  Fenton  in  his  work  refers  to  the  decision  in  the 
case  of  Booth  v.  Garrelly,  1  Blatch,  (C.  C.)  247^  as  in- 
structive for  the  reason  that  the  patent  under  consider- 
ation comprised  two  claims,  one  for  the  configuration  of 
the  article,  a  button,  and  "the  other  for  the  surface  or- 
namentation of  the  completed  button." 

The  discussion  of  the  subject  of  surface  ornamenta- 
tion which  appears  in  the  case  of  ex  parte  Gerard^  is 
instructive.  It  was  pointed  out  that  a  patent  might  be 
obtained  for  a  stove  including  the  shape  of  the  stove  with 
the  surface  ornamentation  of  its  sides  and  top,  but  that, 
"In  such  case  he  can  not  secure  a  claim  for  the  design  as 
to  ornamentation  as  applied  to  the  sides  and  top  of  any 
stove,  regardless  of  its  form  and  configuration". 

The  decisions  in  the  cases  of  ex  parte  Proeger',  and 
ex  parte  Hartman''  are  usually  referred  to  as  prohibit- 
ing tlie  grant  of  a  patent  for  a  surface  ornamentation. 
The  rulings  in  these  cases  however,  are  directly  to  the 
effect  that  in  order  to  obtain  a  patent  a  particular  article 
of  manufacture  must  be  specified.  A  patent  was  granted 
to  Proeger  in  which  the  claim  is  for  "the  design  for  a 
vessel"^. 


1 — Fenton  on  Designs — pp  9-10. 
2 — 43  O.  G.,  1235;    1888  C.  D.  37. 
3_57  O.  G.,  546;    1891  C.  D.   182. 
4 — 84  O.  G.,  648;   1898  C.  D.  120. 
5 — Design  Patent  No.  21,181,  Proeger. 


32  Patents  for  Designs 

A  patent  now  is  granted  in  accordance  with  the  ruling 
in  the  case  of  ex  parte  Fulda^  for  a  design  consisting  of 
surface  ornamentation. 

15.  Unitary  Structure. — The  attempt  has  often  been 
made  to  secure  a  patent  on  a  device  which  is  not  a  single, 
unitary  structure,  the  Patent  Office  holding  that  the  term 
"article  of  manufacture"  means  such  a  structure  and 
not  two  or  more  parts,  although  they  are  joined  togeth- 
er. Some  idea  of  what  is  meant  by  the  term  "unitary 
structure"  may  be  obtained  by  a  consideration  of  those 
structures  which  have  been  held  not  unitary. 

In  the  earliest  reported  case  found  bearing  on  this 
subject  the  question  whether  a  patent  should  be  issued 
on  a  design  for  a  glass  inkstand  and  a  glass  stopper  was 
discussed".  The  Commissioner  ruled  that  the  inkstand 
and  stopper  did  not  constitute  a  single  unitary  design 
for  an  article  of  manufacture"  and  that  both  were  not 
patentable  in  a  single  application.  As  another  objection 
to  granting  a  single  patent  on  both  the  inkstand  and  the 
stopper  this  was  presented: — 

"Another  consideration  of  importance  is,  that  the  rel- 
ative position  of  the  two  parts,  wdien  connected,  ought 
to  be  uniform  and  fixed,  in  order  to  constitute  a  design, 
which  is,  as  a  general  rule,  a  thing  essentially  unitary 
and  unvarying  in  character.  A  design  can  not  embrace 
in  its  scope  alternates  or  equivalents  of  form.  It  is  arbi- 
trary and  unchangeable,  either  by  the  separation  or  the 
rearrangement  of  its  features.  In  this  case  it  is  obvious 
that  there  is  nothing  in  the  construction  presented  to 
preserve  the  alleged  design  shown,  even  when  the  stop- 
per is  in  place,  for  it  may  be  turned  out  of  parallelism 
with  the  square  of  the  stand,  whereby  the  esthetic  eifect 
described  will  be  violated  and  the  original  design  de- 

1 — 194  O.  G.  549. 

■1 — Bloomfield  Brower,   1873,  C.  D.,  151. 


Unitary  Structure  33 

stroyed.     It  would  then  be  like  a  Capital  misplaced  on 
the  shaft  of  a  column." 

During  the  time  when  a  plurality  of  claims  was  allow- 
ed the  Office  held  that  a  claim  for  a  ''definite,  segregable, 
distinct  part"  of  a  device  was  allowable,  but  that  a  claim 
for  a  part  of  an  entire  whole  was  not  allowable^  Mr. 
Fenton  has  well  stated  the  law  on  this  subject : 

"Unity  of  design  constitutes  another  very  important 
question  in  design  cases,  and  it  may  be  laid  down  as  a 
general  rule  that  where  there  is  no  necessary  connection 
between  two  designs  or  parts  of  a  design,  there  is  an 
absence  of  unity  to  render  them  a  single  patentable  de- 
sign, '  '^ 

citing  ex  parte  Patitz^,  and  ex  parte  Gerard^ 

A  cradle  supporting  frame  and  a  cradle  body  were  held 
not  to  be  a  unitary  structure  although  used  together^ 
They  were  two  separate  designs.  So  also  were  two  cast- 
ings whicli  were  adapted  to  interlock  to  form  a  joints 
As  these  castings  bore  no  resemblance  to  each  other  in 
shape  or  configuration,  they  did  not  constitute  a  unitary 
design  but  were  merely  an  aggregation  of  two  designs. 

16.  Design  and  Copyright  Protection. — There  are 
some  articles  which  may  be  subject  to  protection  under 
either  the  copyright  laws  or  the  design  laws.  Whether 
they  should  be  entered  under  the  former,  or  patents 
should  be  obtained  under  the  latter  depends  upon  cir- 
cumstances. "While  dolls,  toys,  tools,  glassware  and 
many  other  similar  articles  are  not  subject  to  copyright', 

1 — Pope,  25,  O.  G.,  290;  1883  C.  D.  74. 

2 — Fenton  on  Designs,  p  16. 

3 — 25  O.  G.,  980;  1883  C.  D.  101. 

4 — 43  O.  G.,  1235;  1888  C.  D.  37. 

5 — Haggard,  80,  O.  G.,  1126;  1897  C.  D.  47. 

6 — Brand,  83  O.  G.,  747;  1898  C.  D.  62. 

7 — Rule  12,  Bulletin  15,  Copyright  Office. 


34  Patents  for  Designs 

paintings  and  sculpture  are,  and  under  the  title,  sculp- 
ture, a  statue  or  statuette  would  be  classified  which  is 
also  subject  matter  for  a  design  patent^.  Design  patents 
have  also  been  issued  for  pictures^. 

The  very  important  question  arises  whether  protec- 
tion may  be  obtained  under  both  laws  for  those  objects 
which  are  capable  of  protection  under  either.  The  sub- 
ject is  discussed  at  some  length  in  the  case  of  Louis  De 
Jonge  &  Co.  V.  Brenker  &  Kessler  Co.^,  in  which  it  is 
stated  that  the  precise  question  had  apparentl}^  never 
been  considered  before.  In  this  case  the  subject  matter 
under  consideration  was  a  small  water  color  entitled 
''Holly,  Mistletoe  and  Spruce".  It  was  intended  to  be 
used  for  a  fancy  paper  design  to  cover  boxes  and  other 
articles  for  the  holiday  season.  It  was,  however,  the 
Court  stated,  a  work  of  art  when  it  was  completed  by 
the  artist.  Relative  to  protection  under  the  two  laws  the 
Court  said : — 

"Since  it  was  qualified  for  admission  into  the  two  stat- 
utory classes,  I  see  no  reason  why  it  might  not  be  placed 
in  either.  But  it  could  not  enter  both.  The  method  of 
procedure,  the  term  of  protection,  and  the  penalties  for 
infringement,  are  so  different  that  the  author  or  owner 
of  a  painting  that  is  eligible  for  both  classes  must  decide 
to  which  region  of  intellectual  effort  the  work  is  to  be  as- 
signed, and  he  must  abide  by  the  decision.  Ordinarily  of 
course,  there  is  no  difficulty.  Not  many  paintings  are 
suitable  for  use  as  designs,  and  only  a  few  designs  pos- 
sess the  qualities  demanded  by  the  fine  arts.  But  it  is 
easily  conceivable  that  here  and  there  a  painting  may  be 
eligible  for  either  class  and  the  water  color  in  question 
is,  I  think,  an  excellent  example.  Such  a  work  may  be 
used  in  both  the  fine  and  the  useful  arts ;  but  it  can  have 
protection  in  only  one  of  these  classes.     The  author  or 

1 — Design  Patent  to  Pretz,  No.  39,603. 

2 — Design  Patent  to  Chapman,  No.  43,667. 

3 — 182  F.   1.50. 


Trademark  Not  a  Design  35 

owner  is  driven  to  his  election  and  must  stand  by  his 
choice." 

The  copyright  obtained  in  this  case  was  held  invalid 
because  of  the  failure  of  the  proprietor  to  give  the  prop- 
er copyright  notice  on  the  copies  exposed  for  sale.  The 
ruling  of  the  lower  court  upon  the  invalidity  from  im- 
proper notice  was  affirmed  on  appeaP. 

17.  A  Trademark  Not  a  Design.— The  distinctions  be- 
tween a  trademark  and  a  design  have  not  always  been 
kept  clear.  A  trademark  has  been  defined  as  ''the  com- 
mercial substitute  for  one's  autograph"-.  It  is  usually 
referred  to  as  a  distinctive  and  arbitrary  mark  used  to 
indicate  origin  or  ownership  of  the  goods  upon  which  it 
is  placed". 

Soon  after  the  passage  of  the  Act  of  1842  attempts 
were  made  to  protect  trademarks  under  that  Act,  and 
some  two  hundred  design  patents  were  issued  for  ''de- 
signs for  trademarks".  It  was  never  the  intent  of  the 
design  law  that  trademarks  should  be  patented  under  it. 
This  was  pointed  out  by  Mr.  Upton  who  wrote  a  treatise 
on  the  subject  of  trademarks  in  1860^.  This  practice  of 
granting-  patents  for  trademarks  was  continued  until  the 
decision  in  the  case  of  ex  parte  Wm.  King  was  rendered 
in  1870'.  The  trademarks  which  were  patented  as  de- 
signs were  such  marks  and  labels  as  are  commonly  used 
on  tobacco,  medicines,  soap  and  other  goods.  The  ruling 
in  the  King  decision,  supra,  was  adhered  to  in  the  case 
of  ex  parte  Wm.  Whyte^. 

1 — Louis  De  Jonge  &  Co.  v.  Brenker  &  Kessler  Co.,  191  F.  35. 

2 — Leidersdorf  v.  Flint,  No.  8219  F.  C. 

3 — See  delinitions  of  a  trademark  in  Elgin  National  Watch  Co.  v. 
Illinois  Watch  Case  Co.,  179  U.  S.,  665;  Davis  v.  Davis,  27  F.  490; 
Newman  v.  Alvord,  51  N.  Y.  189;  Standard  Paint  Co.  v.  Trinidad 
Asphalt  Mfg.  Co..   220  U.  S.   446;    165  O.  G.   971;    1911  C.  D.  530. 

4 — Upton  on  Trademarks,  pp  18-19. 

5 — 1870  C.  D.,  109. 

6 — 1871  C.  D.,  304.  For  a  discussion  of  this  subject  see  Vol. 
CVII  No.  16  p  33  of  the  Scientific  American,  Oct.  19,  1212,  "Early 
Attempts  to  Protect  Trademarks"  by  Wm.  L.  Symons. 


36  Patents  for  Designs 

The  case  of  Hoeb  et  al.  v.  Bishop  et  al.^  is  a  peculiar 
one.  In  that  case  an  ornamental  badge  which  was  at- 
tached to  a  cigar  by  means  of  a  pin  was  claimed  to  be  a 
trademark  by  the  dealer  who  first  put  out  cigars  with 
this  badge  on  them.  The  Court  thought  the  badge  was 
an  object  of  value  and  capable  in  itself  of  ownership  and 
that  it  could  not  therefore  be  a  trademark.  If,  the  Court 
said,  this  was  a  trademark  such  a  holding  would  lead  to 
the  result  that  any  two  salable  articles  of  merchandise 
might  be  attached  together  and  that  one  might  be  claim- 
ed as  a  trademark  of  the  other.  Proper  protection  in 
this  case  apparently  could  have  been  secured  under  the 
design  patent  laws. 

The  Patent  Office  having  decided  that  a  certain  device 
is  a  design  for  which  a  patent  has  been  issued  will  not 
grant  to  another  registration  of  this  same  design  as  a 
trademark.  To  do  so  would  cast  a  shadow  on  the  right 
of  the  patentee^. 

Eegistration  of  a  design  the  patent  for  which  has  ex- 
pired will  be  granted  if  use  of  the  design  as  a  trademark 
is  shown  in  accordance  with  the  statute^. 

In  holding  a  design  patent  for  a  horseshoe  calk  invalid 
the  Circuit  Court  of  Appeals  of  the  Second  Circuit  stat- 
ed:— 

"The  designer  of  articles  of  manufacture  not  other- 
wise entitled  to  receive  design  patents  can  not  justify  the 
issuance  of  such  patents  on  the  theory  that  the  design  is 
a  trademark"^. 

In  this  case  the  court  thought  that  the  shape  of  the 
particular  article  under  consideration  could  only'  have 
the  effect  of  advising  the  purchaser  that  the  calk  was 


1—49  O.  G.,  1845;  1889  C.  D.  695. 
2 — Lee  &  Shepard,  24  O.  G.,  1271;  1883  C.  D.  66. 
3 — King,  46  O.  G.,  119;  1889  C.  D.  3. 

4 — Rowe  V.  Blodgett  &  Clapp  Co.,  112  F.  61;  98  O.  G.,  1286;  1902 
C.  D.  583;  see  also  Coats  et  al.  v.  Merrick  Thread  Co.,  149  U.  S.,  562; 
(^2)  O-  G.  1531;  1893  C.  D.  373. 


Internal  Structure  '^7 

made  by  the  patentee;  the  calk  was  not  ornamental  or 
attractive. 

It  is,  of  course,  well  established  that  the  name  of  a  pat- 
ented article  is  not  a  valid  trademark,  and  this  rule  was 
applied  in  a  case  involving  a  design  patent.-^  After  the 
design  patent  had  been  secured  on  the  image  known  as 
''Billiken"  an  attempt  was  made  to  register  the  word 
as  a  trademark  for  images.  This  was  refused.  At  the 
expiration  of  the  term  for  which  the  patent  was  issued, 
the  public  is  entitled  to  manufacture  the  design  covered 
by  the  patent.  The  grant  of  a  trademark  would  prevent 
the  use  of  the  descriptive  term  "Billiken"  for  that  de- 
sign which  is  the  only  term  by  which  it  could  be  properly 
designated. 

An  ornamental  feature  of  a  fire  alarm  box  (the  well 
kno^^^l  Gamewell  fire  alarm  box)  was  refused  registra- 
tion as  a  trademark^.  The  ornamental  casing  if  new 
would  probably  have  been  subject  matter  for  protection 
under  the  design  patent  laws.  An  effort  to  register  the 
ornamental  feature  of  a  spoon  as  a  trademark  was  un- 
successful". 

18.  Internal  Structure. — The  definitions  of  a  design 
patent  (section  4)  show  that  it  relates  to  appearance; 
to  the  effect  on  the  mind  through  the  eye.  It  therefore 
follows  that  the  internal  structure  of  an  object  can  not 
be  made  the  subject  matter  of  a  design  patent,  or  be  con- 
sidered as  an  element  in  determining  the  question  of  pat- 
entability. This  is  pointed  out  in  the  case  of  Feder  v. 
Poyet^  ' 

An  attempt  to  show  a  wire  or  bar  which  in  the  com- 
plete article  for  which  the  design  patent  was  desired  was 


1 — The  Craftsman's  Guild,  143  O.  G.,  257;   1909  C.  D.  91. 
2 — The  GameweU  Fire  Alarm  Telegraph  Co.,  185  O.  G.  827;   1912 
C.  D.  394. 

3 — Oneida  Community,  Ltd.,  190  O.  G.,  1027. 
4—89  O.  G.  1343;  1899  C.  D.  218. 


38  Patents  for  Designs 

hidden  was  not  successful.  The  Commissioner  of  Patents 
said  that  this  bar  was  a  feature  of  internal  construction 
and  should  therefore  not  be  disclosed  in  the  drawing^ 
This  ruling  was  subsequently  approved^. 

In  the  case  of  ex  parte  Kohler^  relative  to  the  require- 
ment of  the  Examiner  that  the  applicant  cancel  a  figure 
which  showed  internal  structure,  the  Commissioner  of 
Patents  ruled: — 

' '  Fig.  3  shows  the  design  in  cross  section,  and  it  is  very 
clear  that  the  article  will  never  have  this  appearance  to 
any  one  seeing  it.  The  petitioner  says  that  this  figure 
does  not  show  the  interior  construction  of  the  article, 
since  there  is  no  interior  construction  shown,  and  in  this 
way  he  seeks  to  distinguish  this  case  from  ex  parte  Colt- 
on,  (104  0.  G.,  1119).  It  is,  nevertheless  true,  that  this  fig- 
ure shows  the  construction  rather  than  the  appearance, 
for,  as  above  stated,  the  figure  has  an  appearance  which 
the  article  itself  can  never  have.  The  drawing  should 
illustrate  the  design  as  it  will  appear  to  purchasers  and 
users,  since  the  appearance  is  the  only  thing  that  lends 
patentability  to  it  under  the  design  law." 

It  does  not  follow  that  sectional  views  are  entirely  pro- 
hibited. If  a  cross  section  clearly  illustrates  a  feature  of 
the  design  and  is  not  used  for  the  express  purpose  of 
showing  internal  construction,  such  a  view  is  permiss- 
ible'*. In  the  Lohmann  case  the  Commissioner  of  Patents 
expressed  the  opinion  that  the  sectional  view  showed 
clearly  that  the  surface  ornamentation  was  in  relief  and 
not  intaglio^. 


1 — Tucker  97  O.  G.,  187;  1901  C.  D.,  140. 

2 — Colton,  104  O.  G.,  1119;  C.  D.,  156. 

3 — 116  O.  G.,  1185;  C.  D.,  192. 

4 — Lohmann  184  O.  G.,  287;   1912  C.  D.,  336. 

5 — Lohmann  Design  Patent  No.  43,  331. 


Improvement  39 

19.  Improvement. — Section  4886  of  the  Revised  Stat- 
utes provides  for  the  granting  of  a  i)atent  for  any  new 
and  useful  art,  machine,  manufacture  or  composition  of 
matter  which  lias  been  invented  or  for  any  new  and  use- 
ful improvement  thereof;  the  design  patent  statute  does 
not  refer  to  "improvements".  It  is  therefore  only  for 
an  original  design  for  which  a  patent  under  this  statute 
may  be  issued;  not  for  an  improvement  thereof.  This 
view  was  advanced  in  the  first  text  book  on  the  subject. 
Simonds  expressed  himself  thus: — 

"It  is  tolerably  clear  that  unless  the  improvement  were 
carried  so  far  as  to  make  the  improved  design  substan- 
tially unlike  the  original,  it  would  not  be  patentable 
*****  both  the  text  of  the  law  and  the  construc- 
tion of  the  court  point  to  the  conclusion  that  a  design 
patent  can  not  be  allowed  for  a  design  which  is  tributary 
to  another,  or  a  mere  improvement  thereon,  and  not  in 
substance  unlike  it"^. 

These  views  apparently  do  not  refer  to  designs  pro- 
duced by  the  same  inventor;  if  so  the  Patent  Office  has 
not  agreed  with  the  interpretation  Mr.  Simonds  placed 
upon  the  law  for  the  patents  issued  show  designs  grant- 
ed to  the  same  inventor  which  are  not  substantially  un- 
like. 

In  the  case  of  Wood  v.  Dolby^  it  was  contended  that  the 
patent  in  suit  was  invalid  because  it  was  for  an  improved 
design.  The  court  said  this  word  "improved"  did  not 
mean  that  the  design  in  question  was  an  improvement 
upon  another,  but  that  the  design  was  new  and  distinc- 
tive and  "improved''  as  compared  with  others.  This 
ruling  was  subsequently  followed.^ 


1 — Simonds  on  Design  Patents  p.  203. 

2 — 7  F.  475;  see  also  sections  22  and  23,  Fen  ton  on  Designs. 

3— Anderson  v.  Saint  46  F.  760;  57  O.  G.,  546;  1891  C.  D.  506. 


40  Patents  for  Designs 

It  is  the  established  practice  of  the  Patent  Office^^o 
object  to  the  use  in  the  specification  of  the  word  ''' 
proved"  in  referring  to  a  design. 


im- 


Chapter  III. 

INVENTION. 

20.  Invention  Necessary. — Design  patent  applications 
are  often  prosecuted  as  if  it  were  not  necessary  that  the 
design  should  be  the  result  of  invention  in  order  to  be 
patentable.  This  is  an  erroneous  view.  Section  4929 
of  the  Revised  Statutes  requires  that  a  design  in  order 
to  be  patentable  should  be  "invented^" 

21..  What  Constitutes  Invention. — What  constitutes 
invention  is  always  a  question  of  considerable  difficulty. 
Greater  difficulty  is  often  experienced  in  design  cases 
than  in  other  classes  of  patents.  This  is  due  partly  to  the 
nature  of  a  design  and  in  part  to  the  statements  which 
occur  iu  some  decisions  to  the  effect  that  a  lower  degree 
of  invention  will  support  a  design  than  a  mechanical 
patent.  In  the  case  of  Untermeyer  v.  Freund  et  aP  the 
court  said: — 

"It  is  impossible  to  read  the  literature  upon  this  sub- 
ject without  being  convinced  that  the  courts,  though 
applying  the  same  rules,  have  looked  with  greater  lenien- 
cy upon  design  patents  than  patents  for  other  inventions. 
A  design  patent  must  relate  to  subject  matter  compar- 
atively trivial.  The  object  of  the  law  is  to  encourage  those 
who  have  industry  and  genius  sufficient  to  originate  ob- 
jects which  give  pleasure  through  the  sense  of  sight." 

To  the  same  effect  is  the  ruling  in  the  case  of  Smith 
V.  Stewart^.     The  court  in  this  case  said  relative  to  the 


1 — Freeman  109  O.  G.,  1339;  1904  C.  D.  619;  Mygatt  v.  M. 
Schauffer-Plaum  191  F.,  836;  Westinghouse  Electric  &  Mfg.  Co.  v. 
Triumph  Electric  Co.  97  F.,  99;  90  O.  G.,  603;  1900  C.  D.  219;  Bolte 
&  Weyer  Co.  v.  Knight  Light  Co.  180  F.  412;  Williams,  Jr.  58  O.  G., 
803;  1892  C.  D.  23;  Smith  v.  Whitman  Saddle  Co.,  148  U.  S.,  678; 
63  O.  G.,  912;  1893  C.  D.,  324;  Foster  v.  Crossin  44  F.,  62;  54  O.  G., 
1115;  1891  C.  D.  304;  Gary  Mfg.  C.  v.  Neal,  98  F.,  617;  90  O.  G., 
1950;   1900  C.  D.,  235. 

2 — 37  F.  342;  47  O.  G.,  527;  1889  C.  D.,  424. 

3—55  F.  481. 


42  Patents  for  Designs 

invention  shown  in  the  creation  of  designs  (a  design  for 
decorating  rugs  in  the  case  then  nnder  consideration) 
that:— 

' '  The  invention  in  a  majority  of  patent  designs  is  very 
small  and  of  a  lower  order.  All  the  statute,  as  commonly 
interpreted,  requires  is  the  production  of  a  new  and 
pleasing  design  which  may  add  value  to  the  object  for 
which  it  is  intended.  The  invention  consists  in  the  con- 
ception, and  production  of  this,  however  simple  it  may 
be." 

Other  rulings  are  opposed  to  the  views  given  in  these 
cases,  and  are  to  the  effect  that  as  high  a  degree  of  in- 
ventive skill  is  called  for  in  the  production  of  a  design 
which  is  entitled  to  protection  under  the  patent  laws  as 
is  necessary  to  support  the  other  kind  of  patents  In 
Fenton's  treatise  is  this  statement: — 

"It  is  now  tolerably  well  settled  that  design  patents 
stand  on  as  high  a  plane  as  other  patents,  in  that  they 
require  to  support  them  the  exercise  of  the  inventive 
or  originative  faculty  in  as  high  a  degree. '  '^ 

This  was  the  view  expressed  by  the  Supreme  Court 
of  the  District  of  Columbia  in  the  case  of  E.  G.  &  W.  F. 
Niedringhaus^  and  followed  by  the  Commissioner  of 
Patents^ 

The  Federal  Courts  have  held  the  same.  In  the  case  of 
Cahoone  Barnet  Mfg.  Co.  v.  Eubber  &  Celluloid  Harness 
Co.^  this  decided  statement  was  made: — 


1 — Perry  v.  Hoskins,  111  F.,  1002. 

2 — Fenton  on  Designs,  Sec.   18. 

3 — 8   O.   G.,   279;    1875   C.  D.,   22. 

4 — Bennage  v.  Phillippi,  9  O.  G.,  1159;   1876  C.  D.,  135. 

5 — 45  F.  582. 


Invention  43 

"I  think  it  may  be  taken  as  settled  that,  to  sustain  a 
design  patent  there  must  be  exhibited  in  the  production 
of  the  design  an  exercise  of  the  inventive  or  original 
faculty  as  clear  and  of  as  high  degree  as  is  called  for  in 
patents  for  inventions  or  discoveries.  In  the  latter  class 
there  must  be  novelty  and  utility;  in  the  former,  beauty 
and  originality.  In  both,  the  final  production  must  have 
been  engendered  by  the  exercise  of  brain  power,  and  to 
such  an  extent  that  it  may  be  said  to  be  born  of  genius." 

As  high  a  degree  of  invention  is  required  in  design 
patents  as  in  utilitv  patents  is  the  ruling  in  Electric 
Mfg.  Co.  V.  OdelP. 

The  Patent  Office  expressly  ruled  in  the  case  of  ex 
parte  Williams,  Jr,-  that  design  patents  require  as  high 
a  degree  of  originality  as  other  patents.  In  an  early  de- 
cision it  was  stated  that  while  ' '  constructive  genius ' '  was 
probably  sufficient  to  support  a  mechanical  patent,  "cre- 
ative" genius  was  necessary  in  a  design.^ 

That  invention  must  be  shown  in  order  to  support  a 
design  patent  is  established;  whether  a  lesser  degree  is 
sufficient  can  not  be  so  satisfactorily  stated.  A  method 
of  determining  the  different  degrees  of  invention  which 
may  exist  in  several  designs  has  not  been  pointed  out  by 
any  one;  nor  can  the  exact  place  where  expected  skill 
ends  and  invention  begins  be  determined  by  any  known 
rule. 

Writers  and  the  majority  of  the  leading  decisions  agree 
that  genius  must  be  shown  in  the  creation  of  a  design. 
Simonds  thought  that  if  an  article  was  given  a  pleasing 
appearance  that  was  sufficient  evidence  of  the  exercise 


1 — 18  F.  321. 

2 — 58  O.  G.,  803;  1892  C.  D.,  23. 

3 — Weinberg  1871  C.  D.,  244. 


4-1  Patents  for  Designs 

of  genius  to  support  a  patents  Fenton  said:  "There 
must  be  originality  and  the  exercise  of  genius  involved. 
Mere  artistic  dexterity  in  grouping  is  not  enough;  it  may 
be  likened  to  mere  mechanical  skill  as  applied  to  sub- 
jects of  functional  patents.  "^ 

Mr.  Justice  Brown  in  the  case  of  Northrup  v.  Adams^, 
pointed  out  that:— 

"To  entitle  a  party  to  the  benefit  of  the  Act,  in  either 
case,  (referring  to  the  laws  granting  mechanical  patents 
and  the  laws  for  design  patents)  there  must  be  origin- 
ality, and  the  exercise  of  the  inventive  faculty.  In  the 
one  there  must  be  novelty  and  utility;  in  the  other  origin- 
ality and  beauty.  Mere  mechanical  skill  is  insufficient. 
There  must  be  something  akin  to  genius,  an  effort  of  the 
brain  as  well  as  the  hand.  The  adaptation  of  old  devices 
or  forms,  however  convenient,  useful  or  beautiful  they 
may  be  in  their  new  role  is  not  invention.'' 

The  Supreme  Court  quoted  this  with  approval  in  its 
decision  in  the  case  of  Smith  v.  Whitman  Saddle  Com- 
pany.^   Eelative  to  design  patents  it  said : — 

"The  exercise  of  the  inventive  or  originative  faculty 
is  required,  and  a  person  cannot  be  permitted  to  select 
an  existing  form  and  simply  put  it  to  a  new  use  any 
more  than  he  can  be  permitted  to  take  a  patent  out  for 
the  mere  double  use  of  a  machine.  If  however,  the 
selection  and  adaptation  of  an  existing  form  are  more 
than  the  exercise  of  the  inventive  faculty,  and  the  re- 
sult is  in  effect  a  new  creation,  the  design  may  be  patent- 
able." 

1 — Simonds  on  Designs,  p.    195. 

2 — Fenton  on  Designs,  p.   14. 

3_F.  C.  10328;   12  O.  G.,  430;   1877  C.  D.  322. 

4—148  U.  S.,  678;   63  O.  G.,  912;   1893  C.  D.,  324. 


Invention  45 

The  Commissioner  of  Patents  subsequent  to  the  passage 
of  the  Act  of  May  9,  1902,  after  a  consideration  of  the 
leading  decisions  on  the  subject  of  invention  as  relating 
to  designs,  said  this: — 

"A  new  and  ornamental  design  will  be  found  in  an 
article  of  manufacture  when  there  can  be  found  in  such 
article  a  new  appearance  created  by  inventive  process  and 
serving  the  purpose  of  embellishment.  Such  new  appear- 
ance may  be  superficially  applied  or  it  may  rest  more  or 
less  deeply  in  the  structure  of  the  parts,  but  it  must  be 
a  creation  of  inventive  genius,  accomplishing  the  purpose 
of  ornament  and  not  used  for  its  functional  value.  "^ 

In  this  case  it  was  ruled  that  no  invention  was  shown 
in  allowing  the  corners  of  buckle-frames  to  remain  angu- 
lar instead  of  rounding  them  as  shown  to  be  common  in 
the  references.    This  was  a  mere  matter  of  choice. 

The  Commissioner  of  Patents  said  in  the  case  of  ex 
parte  Kern-  in  considering  an  application  for  a  design 
patent  for  cross  straps  for  garment  supporters  that: — 

"It  is  as  necessary  that  invention  should  be  exercised 
in  producing  the  subject  matter  to  be  secured  by  a  de- 
sign patent  as  it  is  in  the  production  of  the  subject  matter 
of  a  mechanical  patent.  Something  in  each  of  these 
classes  of  cases  is  expected  to  be  within  the  reach  of  the 
skilled  workman  in  the  arts,  and  a  design  to  be  patent- 
able must  surpass  that  which  is  expected  of  the  work- 
man and  rise  to  the  dignity  of  invention  which  it  will  do 
when  its  creation  involves  an  exercise  of  the  constructive 
imagination  beyond  that  which  may  be  expected  to  be 
usually  employed  by  any  competent  workman." 


1 — Knothe,  102,  O.  G.,  1294;  1903  C.  D.  42. 
2 — 105  O.  G.,  2061;  1903  C.  D.  42. 


46  Patents  for  Designs 

No  invention  was  fonnd  in  this  case  in  placing  a  well 
known  ornamental  figure  on  the  center  of  the  cross-strap 
nsed  for  a  functional  purpose. 

Examples  of  invention  not  shown. — The  mere  change 
of  shape  of  the  lamp  shade  in  issue  was  held  not  suffi- 
cient in  a  recent  case  to  support  a  design  patent,  many 
similar  shapes,  some  of  them  invented  by  the  same  in- 
ventor, being  shown^.  No  invention  was  disclosed  in 
jjlacing  ceriphs  which  were  shown  to  be  old  in  the  art 
on  letters  found  also  to  be  old^.  Such  a  change  was  held 
to  be  obvious.  There  was  no  patentable  invention  in- 
volved in  the  idea  of  placing  an  ornament  on  an  album 
case,  the  patentee  not  having  been  the  designer  of  either 
the  album  or  the  ornament^.  The  slight  changes  in  a  font 
of  type  which  the  applicant  had  produced  were  held  not 
to  have  involved  invention  in  view  of  what  was  old  in  the 
art^;  skill  only  and  not  invention  was  involved  in  the 
changes  made  in  the  design  for  a  card  of  buttons^  In- 
vention was  not  found  in  the  production  of  the  saddle 
under  consideration  in  the  case  of  Smith  v.  Whitman 
Saddle  Co.*^.  The  difference  in  form  of  applicant's  ma- 
chine bed  from  prior  beds  would  suggest  itself  to  any 
workman,  and  did  not  involve  invention'.  A  design  for 
a  tube  which  differs  from  a  patented  tube  merely  in  a 
rounded  instead  of  a  flat  bottom  and  the  addition  of  a 
bead  near  the  top  does  not  disclose  patentable  invention^. 
No  invention  was  showD  in  the  production  of  the  monu- 
ment which  was  considered  in  the  case  of  Perry  v.  Hos- 


1 — Mygatt  V.  M.  Schauffer-Flaum  Co.,  191  F.,  836. 

2_Barnhart,  115,  O.  G.,  247;    1905  C.  D.,  68. 

3 — Bergner   v.    Kaufmann,    52    F.,    818. 

4 — Schmohl,   115   O.  G.,  505;    1905  C.  D.,   78. 

5 — Pratt  V.  Rosenfeld,  3  F.,  335;   21  O.  G.,  866;    1882  C.  D.,  146. 

6^148  U.  S.,  678;   63  O.  G.,  912;   1893  C.  D.,  324. 

7 — Hanson,  105  O.  G.,  2058;  1903  C.  D.,  284. 

8 — Lambert,  119  O.  G.,  1925;  1905  C.  D.,  531. 


Invention  47 

kins^    The  court  found  no  invention  in  the  bottle  shown 
in  design  patent  39,  921^. 

Instances  of  invention  shown. — The  change  in  the  form 
and  arrangement  of  the  parts  of  a  lamp  by  wliich  a  new 
and  ornamental  appearance  was  produced  was  held  to 
involve  invention^.  Invention  was  held  to  be  shown  in 
the  mantel  which  was  the  subject  of  the  suit  in  the  case 
of  Anderson  v.  Saint^.  Invention  was  shown  in  the  Web- 
ster "thin  model"  clothes  brush\  The  hay  fork  pulley 
disclosed  in  design  patent  1()031  was  valid,  showing  in- 
vention*^. A  cooking  stove  which  was  the  result  of  in- 
vention was  the  subject  matter  of  the  suit  in  Redway  et 
al  V.  Ohio  Stove  Co."^.  Invention  was  present  in  the  cre- 
ation of  a  rug  as  shown  in  design  patent  18703^.  A  coach 
lani])  resembling  a  tulip  conventionalized  in  form  showed 
sufficient  evidence  of  invention  to  sustain  a  patent'*.  It 
was  not  so  clear  that  a  badge  lacked  invention  that  a 
demurrer  alleging  want  of  invention  should  have  been 
sustained^".  The  dignity  of  invention  was  accorded  the- 
gas  lamp  shown  in  design  patent  No.  35,481^^ 

22.  Novelty  Not  Sufficient. — Novelty  alone  is  of  course 
not  sufficient  to  sustain  a  patent  for  a  design.  The  as- 
sumption is  apparently  often  made  in  the  prosecution  of 
applications  that  if  the  design  is  shown  to  be  new  a 
patent  should  be  issued.     Slight  attention  given  to  the 

1 — 111  F.,  1002. 

2 — Chas.  Boldt  Co.  v.,  Turner  Bros.  Co.,  199  F.,  139. 

3 — Gray  114  O.  G.,  543;  1905  C.  D.  21. 

4 — 46  F.,  607;  57  O.  G.,  546;  1891  C.  D.  506. 

.5 — Tilden  Tliurber  Co.,  v.  T.  W.  Foster  &  Bro.  Co.  195  F.  538. 

6 — Stearns  v.  Beard,  4  6  F.  19  3. 

7   38   F.,   582. 

s — Smith  V.  Stewart,  55  F.  481. 

9— Britton  v.  White  Mfg.  Co.,  61  F.  93. 

10 — CaldweU  v.  PoweU,  73  F.  488. 

11 — General  Gas  Light  Co.  v.  Matchless  Mfg.  Co.,  129  F.  137. 


48  Patents  for  Designs 

design  statute  must  show  the  fallacy  of  this.    The  design 
must  have  been  "invented." 

This  is  well  illustrated  in  the  case  of  Wooster  v.  Crane^. 
The  reel  in  suit  was  new;  no  one  had  ever  used  the  par- 
ticular shape  of  reel  patented  by  the  complaintant,  but 
as  a  reel  was  an  old  article  of  manufacture  and  the  shape 
was  a  well  known  mathematical  figure,  no  invention  was 
disclosed  and  the  patent  was  held  invalid.  This  is  also 
illustrated  in  the  case  of  Collender  v.  Griffith^.  The  nov- 
elty due  to  the  difference  in  the  bevel  of  the  sides  and 
end  of  the  complaintant 's  table  was  not  sufficient  to  sus- 
tain a  patent.  The  court  found  that  no  new  idea  was 
present  and  the  lack  of  invention  was  fatal  to  the  patent. 
The  Patent  Office  clearly  pointed  out  in  the  case  of 
Wright  V.  Lorenz"''  that  a  design  was  not  patentable 
merely  because  the  shape  rendered  it  distinguishable 
from  other  articles.  In  the  case  of  Bolte  and  Weyer  Co. 
V.  Knight  Light  Co.''  it  was  said  that  to  hold  that  every 
symmetrical  article  should  be  the  subject  of  a  design 
patent  seemed  unconscionable;  that  the  design  must  dis- 
close inventive  genius.  There  are  many  other  decisions 
to  the  same  eifect.^ 

23.  Non-Analogous  Arts. — A  design  found  to  be  old 
in  an  analogous  art  would  not  of  course  be  patentable^. 


1 — F.  C.  18036. 

2 — Reported  in  Fenton  on  Designs,  p.  83. 

3 — 101   O.   G.,   664;    1902   C.   D.    340. 

4 — 180   F.,   412. 

5 — Freeman  109  O.  G.,  1331;  1904  C.  D.  619;  Mygatt  v.  Schauf- 
fer-Flaum,  191  F.  836;  Westinghouse  v.  Triumph  Electric  Co.  90 
O.  G.,  603;  1900  C.  D.  219;  Knothe  102  O.  G.,  1294;  1903  C.  D.  42; 
Kern  105  O.  G.,  2061;  1903  C.  D.  42;  Hartshorn,  104  O.  G.,  1395; 
1903  C.  D.  170;  Perry  v.  Hoskins,  111  F.  1002;  Lambert  119  O.  G., 
1925;  1905  C.  D.  531;  Rowe  v.  Blodgett  &  Clapp  112  F.  61;  98 
O.  G.,  1286;    1902  C.  D.  538. 

6 — Fenton  on  Designs,  p.  15;  Niedringhaus,  8  O.  G.,  279;  1875 
C.  D.  22. 


Non-Analogous  Arts  49 

This  would  be  a  mere  double  use,  and  the  principle  ap- 
plicable in  mechanical  cases  would  apply.  Nor  is  the 
adaption  of  a  well  known  existing  object  to  a  new  pur- 
pose invention^  In  the  case  of  Northup  v.  Adams^  Mr. 
Justice  Brown  said: — 

"The  adaption  of  old  devices  to  new  purposes,  how- 
ever convenient,  useful  or  beautiful  they  may  be  in  their 
new  role  is  not  invention." 

In  this  decision,  the  ruling  in  the  case  of  Bennage  v. 
Phillippi^  is  referred  to  with  approval.  The  design 
claimed  in  that  case  was  the  representation  of  the  Me- 
morial Hall  at  the  Centennial  Exposition  which  had  been 
made  into  an  inkstand  and  a  paper  weight  by  the  re- 
spective parties  to  an  interference  proceeding  involving 
the  design.  It  was  contended  that  as  the  parties  used 
the  design  for  articles  in  non-analogous  arts  both  should 
have  a  patent.  The  Commissioner  of  Patents  made  this 
statement  in  the  discussion  of  the  question  raised: — 

"The  arbitrary  chance  selection  of  the  the  form  of  a 
now  well  known  and  celebrated  building,  to  be  applied 
to  toys,  inkstands,  paper  weights,  etc.,  does  not,  in  my 
opinion,  evince  the  slightest  exercise  of  invention,  indus- 
try, effort,  genius  or  expense.  It  is  a  mere  imitation  which 
any  artisan  has  the  right  to  apply  to  any  object  his  fancy 
may  dictate.  And  as  the  objects  of  fancy  are  innumerable, 
so  the  number  of  patents  for  this  design  may  also  be  in- 
numerable if  the  government  were  foolish  enough  to 
grant  them." 


-Osborn  v.  Judd,  29  F.,  96;  38  O.  G.,  1132;  1887  C.  D.,  227. 
-F.  C,  10328;  12  O.  G.,  430;  1877  C.  D.  322. 
-9  O.  G.,  1159;  1876  C.  D.  135. 


50  Patents  for  Designs 

An  attempt  was  made  to  prevent  the  infringement  of 
designs  for  jewelry  pins  one  representing  a  spoon  and  the 
other  a  table  fork.  In  deciding  that  no  invention  was 
involved  in  the  use  as  jewelry  of  forks  and  spoons  the 
Circuit  Court  for  the  District  of  Ehode  Island  said  in 
Foster  v.  Crossin^  that: — 

"In  the  light  of  the  words  of  the  statute,  and  of  the 
uniform  course  of  decisions  upon  the  subject,  we  can  have 
no  doubt  that  a  design  for  a  piece  of  metal  in  the  shape 
of  a  spoon  or  fork  two  inches  long,  precisely  similar  in 
appearance  both  generally  and  in  form  of  edge  to  com- 
mon spoons  or  forks  six  inches  long,  lacks  the  novelty 
necessary  to  support  a  patent." 

These  decisions  have  pointed  the  way  to  the  practice 
which  prevails.  To  take  an  object  found  in  nature  and 
apply  it  to  the  use  of  some  article  of  manufacture  with- 
out making  an  appreciable  change  in  it  does  not  in- 
volve invention;  nor,  is  there  invention  in  taking  an  ob- 
ject or  ornamentation  in  one  art  and  using  it  in  a  non- 
analogous  art.  The  error  in  thinking  there  is  results 
from  the  supposition  that  the  idea  of  using  an  existing 
object  in  one  art  is  capable  of  protection  under  the  de- 
sign law;  the  design  law  protects  the  ornamental  design, 
not  the  thought  which  results  in  applying  the  design  from 
one  art  to  another  art. 

The  Supreme  Court  after  referring  to  the  ruling  in  the 
case  of  Northrup  v.  Adams,  supra,  with  approval  summed 
up  the  law  on  the  subject  of  the  adaptation  of  old  devices 
to  new  purposes  in  the  case  of  Smith  v.  Whitman  Sad- 
dle Co.^  as  follows: — 

"Many  illustrations  are  referred  to,  as  for  instance, 
the  use  of  a  model  of  the  Centennial  Building  for  paper 


1 — 44  F.,  62;  54  O.  G.,  1115;  1891  C.  D.,  304. 

2 — 148  U.  S.,  678;  63  O.  G.,  912;  1893  C.  D.,  324. 


NoN -Analogous  Arts  51 

weights  and  inkstands;  the  thrusting  of  a  gas  pipe 
through  the  leg  and  arm  of  the  statue  of  a  shepherd  boy, 
for  the  purpose  of  a  drop  light;  the  painting  upon  a 
familiar  vase  of  Steuart's  portrait  of  Washington,  none 
of  which  were  patentable  because  the  elements  of  the 
combination  were  old.  The  shape  produced  must  be  the 
result  of  industry,  effort,  genius,  or  expense,  and  new  and 
original  as  applied  to  articles  of  manufacture  (Foster  v. 
Crossin  44  F.  62).  The  exercise  of  the  originative  faculty 
is  required,  and  a  person  cannot  be  permitted  to  take 
a  patent  for  the  mere  double  use  of  a  machine.  If,  how- 
ever, the  selection  and  adapation  of  an  existing  form  are 
more  than  the  exercise  of  the  imitative  faculty  and  the 
result  is  in  effect  a  new  creation,  the  design  may  be 
patentable." 

An  automobile  bell  unlike  any  other  bell  previously 
produced  was  the  subject  of  the  suit  in  Bevin  Bros.  Mfg. 
Co.  V.  Staar  Bros.  Bell  Co.^  The  court  pointed  out  that 
in  determining  the  question  of  invention  it  could  avail 
itself  of  such  knowledge  as  is  possessed  by  the  general 
public,  and  held  the  patent  void  in  this  manner: — 

"The  eyes  of  the  Court  can  not  be  closed  to  the  fact 
that  in  the  court  room  itself  are  electric  light  fixtures, 
placed  there  long  before  the  date  of  the  patent,  which 
show  a  sphere  with  a  neck  and  rim  so  nearly  identical 
with  those  of  the  patent  that  the  difference  is  a  mere 
matter  of  immaterial  proportions.  Nor  can  the  andirons 
of  our  fathers,  the  door  knobs  from  time  immemorial,  the 
old  chime  bell  of  the  sleigh,  the  conventional  cuspidor, 
be  overlooked.  The  Court  must  take  judicial  notice  of 
the  oblate  spheriod  and  neck  common  to  the  whole  field 
of  every  day  arts,  and  must  hold  that  this  design  is,  at 
most,  the  adaption  of  an  old  form  to  a  new  purpose." 

1 — 114  F.,  362. 


52  Patents  for  Designs 

The  Circuit  Court  of  Appeals  for  the  Sixth  Circuity 
and  the  Circuit  Court  of  Appeals  for  the  Seventh  Cir- 
cuit^,  both  held  the  Boldt  design  patent  No.  39921  for  a 
bottle,  void,  finding  anticipations  outside  of  the  bottle 
art  or  any  art  analogous  to  it.  The  rulings  of  the  Patent 
Office  are  to  the  same  et¥ect^.  In  the  Knothe^  case  this 
statement  is  made: — 

"The  doctrine  of  double  use  applies  as  well  as  to  me- 
chanical inventions  and  has  an  even  wider  application  in 
the  ease  of  designs  *****  jj^  designs  the  doc- 
trine of  double  use  is  not  limited  to  the  selection  of  de- 
vices in  the  same  or  analogous  mechanical  arts,  since 
relating  solely  to  shape  or  appearance  the  mechanic  in 
producing  a  design  may  avail  himself  of  old  shapes  where- 
ever  they  are  found  and  for  whatever  purpose  they  were 
before  used." 

One  decision  only  opposed  to  the  doctrine  herein  set 
forth  has  been  found.  In  the  Bartholomew  case^  the 
application  for  a  design  patent  for  rubber  erasers  had 
been  refused  on  the  ground  that  the  form  of  the  eraser 
was  already  old  in  artists'  stumps.  Relative  to  this  re- 
jection the  Commissioner  of  Patents  said: — 

"As  to  the  first  ground  of  rejection,  I  think  the  Exam- 
iner is  in  error.  This  purports  to  be  a  new  form  or  shape 
of  a  distinct  article  of  manufacture,  to  wit,  rubber  erasers. 
If  it  be  new,  as  thus  applied,  it  is  immaterial  whether 
pencils  or  stumps  or  penhandles,  or  anything  else  may  or 
may  not  have  been  made  cylindrical.     If  they  are  not 

1 — Chas.  Boldt  Co.  v.  Nivison-Weiskoff  Co.  194  F  871. 
2— Chas.  Boldt  Co.  v.  Turner  Bros.  Co.,  199  F.  139. 
3 — Leigh  V.  Saart,  101  O.  G.,  663;  1902  C.  D.  367. 
4 — Knothe,  102,  O.  G.,  1294;   1903  C.  D.  42. 
5—1896  C.  D.,  103. 


Aggregation  i")3 

substantially  the  same  articles  of  manufacture  as  erasers, 
the  old  form  applied  to  this  new  article  is  unquestionably 
entitled  to  protection." 

The  decisions  of  the  Patent  Office  and  the  courts  are 
overwhelmingly  against  the  conclusion  reached  in  this 
decision.  An  anticipation  of  a  design  may  be  obtained 
from  a  non-analogous  art. 

24.  Aggreg-ation  of  Old  Ornaments  Not  Invention. — 

A  mere  aggregation  of  old  well  known  ornamental  devices 
does  not  constitute  invention  in  designs.  There  must  be 
something  more;  a  combination,  blending,  arrangement, 
proportioning  of  the  parts  in  a  manner  to  produce  a 
structure  which  the  mind  will  regard  as  a  distinct,  uni- 
tary structure,  is  necessary. 

Mr.  Fenton  has  happily  expressed  the  idea  thus : — 

"The  law  of  combinations  is  equally  applicable  to  de- 
sign. As  in  mechanical  devices,  a  mere  aggregation  of 
designs,  like  a  mere  aggregation  of  mechanisms  does  not 
constitute  patentable  combinations  arising  to  the  dignity 
of  invention.  As  in  combination  of  mechanisms,  to  be 
patentable  they  must  coact  to  produce  a  united  result, 
so  in  designs  a  mere  grouping  together  of  old  ornaments 
or  designs  to  be  patentable  as  a  new  design  must  produce 
as  a  whole  a  new  effect,  result,  or  appearance,  due  to  all 
the  parts  as  a  unit,  and  not  resulting  from  the  separate 
appearance  of  each  of  the  separate  or  separable  parts. 

*****  Mere  artistic  dexterity  in  grouping  is 
not  enough;  it  may  be  likened  to  mere  mechanical  skill 
as  applied  to  subjects  of  functional  patents^" 

These  statements  are  well  supported  by  several  cases. 


1 — Fenton  on  Designs,  p.   14. 


54  Patents  for  Designs 

111  the  decision  in  the  case  of  Northup  v.  Adams/  decid- 
ed in  1877,  the  patent  involved  was  a  design  for  a  cheese 
safe  whicli  was  shown  to  be  produced  by  the  mere  aggre- 
gation of  old  shapes  and  means  of  embellishment,  all  of 
which  were  well  known.  In  holding  the  patent  void  the 
court  made  these  observations: — 

"If  a  combination  of  old  designs  be  patentable  at  all, 
of  which  I  have  some  doubt,  the  combination  must  be 
such  as  to  produce  a  new  appearance.  If  the  effect  pro- 
duced be  simply  the  aggregation  of  familiar  designs,  it 
would  not  be  patentable." 

The  patented  design  in  suit  in  the  case  of  Perry  v. 
8tarrett-  which  was  for  a  stove  is  an  instance  in  the 
opinion  of  the  court  for  the  Southern  District  of  New 
York,  of  a  harmonious  arrangement,  of  parts  and  em- 
bellishments, some  of  which  were  old,  to  produce  a  new, 
ornamental  effect.  The  complete  newel  post  shown  in 
design  patent  No.  12026  was  held  valid  in  the  case  of 
Simpson  v.  Davis.^  In  this  case,  however,  are  laid  down 
some  of  the  proper  means  of  determining  whether  a 
structure  is  a  mere  aggregation  of  old  forms  or  orna- 
mentations not  producing  a  new  and  original  effect  or 
whether  taken  as  a  whole  it  can  be  regarded  as  the  em- 
bodiment of  a  new  idea  in  ornamentation.  In  Kraus  v. 
Fitzpatrick'*  in  considering  the  question  of  the  validity 
of  a  design  patent  for  a  corset  (No.  13,620)  the  court 
succintly  put  the  matter  thus  in  upholding  the  patent:— 

"Most  of  the  special  features  of  this  design  are  to  be 
found,  separately,  in  prior  things,  but  they  are  nowhere 

1 — F.  C.  10328;  12  O.  G.,  430;  1877  C.  D.  322. 
2 — 3  Bann.  &  Ard.,  489;   14  O.  G.,  559;   1878  C.  D.   368;   Design 
Patent  No.   7456. 
3 — 12  F.,  144. 
4 — 34  F.,  39. 


Aggregation  55 

combined  so  as  to  make  such  an  effect  as  a  whole,  and 
that  is  what  is  to  be  looked  at." 

An  examination  of  the  patents  issued  within  the  last 
three  or  four  years  discloses  illustrations  of  designs  which 
have  been  held  by  the  board  of  examiners-in-chief  or  the 
Commissioner  as  unitar}^  designs  which  produce  a  dis- 
tinctive effect  and  which  are  not  mere  aggregations  of  old 
shapes  or  ornaments.^  The  board  of  examiners-in-chief  in 
reversing  the  examiner  in  the  Estes  application  discussed 
the  question  of  aggregation  as  follows: — 

' '  The  examiner  has  not  positively  rejected  the  appealed 
claim  upon  the  ground  that  it  defines  a  construction 
built  up  from  aggregated  features  of  design.  He  has, 
however,  cited  against  the  appealed  claim  a  plurality  of 
references  in  which  he  severally  points  out  by  way  of 
justifying  his  action,  certain  elements  or  features  which 
more  or  less  resemble  portions  of  the  applicant's  design, 
also  specified.  An  action  of  this  character  is  justifiable 
only  in  cases  where  a  design  has  been  produced  by  ag- 
gregating independent  features  old  or  new,  and  in  such 
a  case  a  rejection  placed  clearly  upon  the  ground  of  ag- 
gregation will  suffice. 

"We  are  not  prepared  to  rule  that  the  applicant's  de- 
sign is  not  of  an  unitary  character.  In  consequence  of 
this  position,  we  cannot  affirm  the  examiner's  rejection 
upon  a  plurality  of  references  alleged  to  show  features 
resembling  portions  of  the  applicant's  construction.  In 
determining  whether  a  design  is  of  an  unitary  or  an  ag- 
gregated character,  the  test  to  be  applied  must  be  the 
impression  received  through  the  eye  of  the  observer  upon 
the  mind.    If  the  impression  thus  received  be  in  fact  of 


1 — Design    patents    to    Nelson,    No.    40,717;    De    Vilbiss,    40,790; 
Madden,  41,441;  Pope,  42,295;  Leichter,  43,052;  Estes,  43,739. 


56  Patents  for  Designs 

an  unitary  character,  the  inquiry  in  that  direction  ends, 
and  such  an  impression  cannot  be  disposed  of  by  arbitra- 
rily separating  an  applicant's  construction  into  ditferent 
portions  and  applying  aptly  worded  characterizations 
thereto.' ' 

The  right  of  an  inventor  of  a  design  to  have  it  con- 
sidered as  a  unitary  body  is  emphasized  in  many  decis- 
sions^. 

25.  Change  in  Color,  Material  or  Size,  Not  Inven- 
tion.— Whether  color  forms  the  proper  subject  for  a  de- 
sign patent  was  the  subject  of  consideration  in  one  of  the 
earliest  cases  on  the  subject  of  designs.  In  the  case  of 
ex  parte  Weinberg^  the  Commissioner  answered  the  ques- 
tion thus: — 

' '  A  mere  substitution  of  one  color  for  another  possesses 
no  element  of  originality,  and  indicates  no  exercise  of 
genius,  and  cannot,  therefore,  become  the  subject  of  a 
patent;  neither  can  any  blending  or  arrangement  of  colors, 
unless  a  new  esthetical  effect  is  produced — an  original 
idea  indicated.' 

The  Commissioner,  however,  pointed  out  that  he  was 
not  prepared  to  say  that  no  design  might  be  based  on 
colors. 

In  considering  an  application  for  a  design  for  finger 
ring  settings  the  Commissioner  of  Patents  in  the  case  of 
ex  parte  TraiteP  discussed  the  question  under  consider- 
ation in  this  section  as  follows: — 


1 — Jammes  v.  Carr-Lowry  Glass  Co.,  132  F.  827;  Chas.  Boldt 
V.  Turner  Bros.  Co.  199  F.,  139-142;  Graff,  Washbourne  &  Dunn  v. 
Webster,  195  F.,  522. 

2 — 1871  C.  D.,  244. 

3 — 25  O.  G.,  783;    1883  C.  D.  92. 


Color,  Material,  Size  57 

"The  material  out  of  which  the  building  is  constructed, 
whether  of  stone,  brick,  wood  or  glass  forms  no  part  of 
the  design.  The  character  of  the  material  whether  vel- 
vet, cloth,  cotton  or  wool,  upon  which  the  designs  find 
expression  are  of  no  possible  importance  in  describing 
the  design  itself.  A  combination  of  red  and  blue  and 
green  may  be  beautiful,  and  the  effect  very  desirable,  but 
it  forms  no  part  of  the  design,  but  is  the  medium  through 
which  the  design,  which  relates  solely  to  form  and  con- 
figuration, finds  expression  or  materializes." 

In  the  case  of  ex  parte  Neidringhaus^  was  presented  the 
question  whether  an  alleged  design  was  patentable  which 
apparently  consisted  in  mixing  a  paint  which  when  ap- 
plied to  metal-ware  produced  a  mottled  appearance  re- 
sembling granite.  The  Commissioner  thought  such  a 
paint  might  be  patentable,  but  that  the  application  of  it 
in  the  ordinary  way  did  not  constitute  subject  matter  for 
a  design  patent. 

Placing  different  shades  of  color  on  an  old  flag  does 
not  amount  to  invention-.  The  substitution  of  green 
glass  for  white  glass  does  not  avoid  infringement,  for 
color  forms  no  part  of  the  design^. 

"Color  constitutes  no  element  of  a  design  patent"  is 
the  statement  made  in  a  case  recently  decided^. 

In  a  well  considered  case  it  was  pointed  out  that  colors 
applied  to  the  design — in  this  case  a  carpet — do  not  af- 
fect the  essential  characteristics^. 

Patentability  in  design  cases  is,  generally  speaking, 
not  dependent  on  the  material  from  which  the  article  is 
constructed.     The   ornamental   eff'ect,   the  configuration, 

1 — 1875  C.  D.,   22. 

2_caldwell  &  Co.  v.  Powell,  73  F.  488;  75  O.  G.,  1206;  1898  C.  D. 
625. 

3 — Jammes  v.  Carr-Lowry  Glass  Co.,  132  F.  827. 

4 — star  Bucket  Pump  Co.  v.  Butler  Mfg.  Co.,  198  F.  857-864. 

5_whittall  V.  Lowell  Mfg.  Co.,  79  F.,  789;  80  O.  G.,  809;  1897 
C.  D.  599. 


^8  Patents  for  Designs 

etc.,  is  the  same  whatever  the  material.  In  an  early  de- 
cision^ a  design  patent  was  sought  upon  a  hollow  hexa- 
gonal column.  In  rejecting  the  claim  the  Commissioner 
pointed  out  that  "A  new  shape  or  configuration  is  inde- 
pendent of  materials  or  modes  of  manufacture ' '. 

The  substitution  of  a  metallic  loop  for  a  loop  formerly 
made  of  silk,  woolen  or  other  material  was  held,  in  the 
case  of  Post  v.  Richards  Hardware  Co.^  as  not  involving 
invention. 

Material  and  size  are  immaterial  in  design  cases,  the 
Commissioner  of  Patents  said  in  1901  in  the  case  of  Ty- 
ler V.  St.  Amand^. 


1 — Geo.  H.  Sellers,  1870  C.  D.,  58. 

2 — 26  F.,  618. 

3_94  O.  G.,  1969;   1901  C.  D.  301. 


Chapter  IV. 
NOVELTY  AND  INFRINGEMENT. 

26.  How  Determined. — A  design  to  be  patentable  must 
be  "new".    How  is  novelty  or  identity  to  be  determined T 

The  celebrated  Gorham  case  was  decided  by  Justice 
Blatchford  in  the  Circuit  Court  of  the  Southern  District 
of  New  York^  In  answering  the  question  whether  two 
designs  were  substantially  the  same  the  Court  refused  to 
assent  to  the  test  of  infringement  proposed  by  the  com- 
plainant; that  is,  the  effect  on  the  eye  of  the  ordinary  ob- 
server. The  same  principles  which  are  applied  in  de- 
termining the  question  of  infringement  of  mechanical 
patents,  should  be  applied,  the  Court  thought,  in  determ- 
ining the  infringement  of  designs.  Whether  a  certain 
design  presented  novelty,  and  of  course  whether  one  was 
an  infringement  of  another  should  be  determined  by  ex- 
perts who  placed  the  articles  side  by  side.  The  court 
thought  a  patent  for  a  design  was  for  the  means  of  pro- 
ducing a  certain  result  or  appearance  and  that  therefore 
if  the  same  appearance  was  produced  by  substantially 
different  means,  the  later  design  was  not  an  infringe- 
ment. 

The  Supreme  Court  of  the  United  States  reversed  the 
lower  court  upon  all  points,  but  with  three  Justices  dis- 
senting^. The  Court  said  in  order  to  answer  the  question 
whether  there  had  been  infringement  and  whether  the 
defendant's  designs  were  substantially  the  same  as  the 
complainant's  it  was  necessary  "to  understand  what  con- 
stitutes identity  of  designs  and  what  amounts  to  in- 
fringement". After  pointing  out  that  a  patent  for  a  de- 
sign was  for  the  thing  itself,  and  not  for  the  manner  of 


1 — Gorham  v.  White,  7  Blatch.  513. 
2— Gorham  v.  White,  14  Wall.  511. 


60  Patents  for  Designs 

producing  it,  the  Court  presented  the  following  upon  the 
question  of  what  is  the  true  test  of  identity  of  design: — 

"Plainly,  it  must  be  sameness  of  appearance;  and  mere 
diiference  of  lines  in  the  drawing  or  sketch,  a  greater  or 
smaller  number  of  lines  or  slight  variances  in  configura- 
tion, if  insufficient  to  change  the  effect  upon  the  eye,  will 
not  destroy  the  substantial  identity.  An  engraving 
which  has  many  lines  may  present  to  the  eye  the  same 
picture,  and  to  the  mind  the  same  idea  or  conception  as 
another  with  much  fewer  lines.  The  design,  however, 
would  be  the  same.  So  a  pattern  for  a  carpet  or  a  print 
may  be  made  up  of  wreaths  of  flowers  arranged  in  a  par- 
ticular manner.  Another  carpet  may  have  similar 
wreaths  arranged  in  a  like  manner,  so  that  none  but  very 
acute  observers  could  detect  a  difference;  yet  in  the 
wreaths  upon  one  there  may  be  fewer  flowers,  and  the 
wreaths  may  be  placed  at  wider  distances  from  each  oth- 
er; surely  in  such  a  case  the  designs  are  alike. 

The  same  conception  was  in  the  mind  of  the  designer, 
and  to  that  conception  he  gave  expression. 

If,  then,  identity  of  appearance,  or,  as  expressed  in 
McCrea  v.  Holdsworth,  sameness  of  effect  upon  the  eye, 
is  the  main  test  of  substantial  identity  of  design,  the  only 
remaining  question  upon  this  part  of  the  case,  is  whether 
it  is  essential  that  the  ai)pearance  should  be  the  same  to 
the  eye  of  an  expert.  The  court  below  was  of  opinion 
that  the  test  of  a  patent  for  a  design  is  not  the  eye  of  an 
ordinary  observer.  The  learned  judge  thought  there 
could  be  no  infringement  unless  there  was  'substantial 
identity  in  view  of  the  observation  of  a  person  versed  in 
designs  in  the  particular  trade  in  question;  of  a  person 
engaged  in  the  manufacture  or  sale  of  articles  contain- 
ing such  designs;  of  a  i^t'i'son  accustomed  to  compare 
such  designs,  one  with  another,  and  who  sees  and  ex- 
amines the  articles  containing  them  side  by  side.'    There 


Novelty  61 

must,  be  thought,  be  a  comparison  of  the  features  which 
make  up  the  two  designs.  With  this  we  cannot  concur. 
Such  a  test  would  destroy  all  the  protection  which  the 
Act  of  Congress  intended  to  give. 

There  never  could  be  piracy  of  a  patented  design,  for 
human  ingenuity  has  never  yet  produced  a  design,  in  all 
its  details,  exactly  like  another,  so  like  that  an  expert 
could  not  distinguish  them. 

No  counterfeit  bank  note  is  so  identical  in  appearance 
with  the  true  that  an  experienced  artist  cannot  discern  a 
difference.  It  is  said  an  engraver  distinguishes  impres- 
sions made  by  the  same  plate.  Experts,  therefore,  are 
not  the  persons  to  be  deceived. 

AVe  hold,  therefore,  that  if,  in  the  eye  of  an  ordinary 
observer,  giving  such  attention  as  a  purchaser  usually 
gives,  two  designs  are  substantially  the  same— if  the  re- 
semblance is  such  as  to  deceive  such  observer,  inducing 
him  to  purchase  one  supposing  it  to  be  the  other — the 
first  one  patented  is  infringed  by  the  other. ' ' 

While  it  is  true  that  the  comparative  appearance  of 
two  desig-ns  must  be  determined  by  the  average  observer, 
and  not  by  the  expert,  it  is  not  meant  that  the  test  must 
be  made  by  one  wholly  unfamiliar  with  the  design  under 
consideration.  A  purchaser,  for  instance,  has  usually 
some  knowledge  of  the  form  and  appearance  of  the  ob- 
jects he  wishes  to  buy,  and  the  knowledge  possessed  by 
such  a  person  may  fairly  be  used^ 

The  rule  of  the  Gorham  case  for  determining  novelty 
has  been  generally  applied.  In  the  case  of  Braddock 
Glass  Co.  Ltd.  et  al.  v.  Macbeth  et  aP,  this  rule  was  stat- 
ed:— 


1 — Byram  v.  Freidberger,  87  F.  559;   82  O.  G.,  1420;    1898  C.  D. 
380. 

2 — 64  F.  118;   70  O.  G.,  1799;   1895  C.  D.  271. 


62  Patents  for  Designs 

"The  novelty  of  a  design  is  to  be  tested  not  by  the  in- 
vestigation of  the  means  employed  for  its  creation,  but  by 
ocnlar  comparison  of  the  design  itself  with  the  prior  de- 
signs which  were  alleged  to  be  substantially  the  same". 

The  test  applied  by  the  Supreme  Court  was  interpreted 
by  another  court  in  this  manner: — 

"If  in  the  eye  of  an  ordinary  observer,  giving  such  at- 
tention as  a  purchaser  usually  gives,  two  designs  are 
substantially  the  same,  if  the  resemblance  is  such  as  to 
deceive  such  an  observer  and  sufficient  to  induce  him  to 
purchase  one  supposing  it  to  be  the  other,  the  one  first 
patented  is  infringed  by  the  other  ".^ 

The  rules  of  this  case  are  further  applied  to  the  same 
effect  in  other  cases^. 

27.  Substantial  Identity  Negatives  Novelty  or  Estab- 
lishes Infringement. — Novelty  is  negatived  by  showing, 
and  infringement  is  made  out  by  using,  substantially  the 
same  design.  It  is  not  necessary  that  a  picture  of  the 
article  under  consideration  be  found  to  be  old  or  in  use 
by  the  defendant.  To  this  effect  is  the  ruling  in  the  first 
case  involving  a  design  patent  ever  tried^.  In  holding 
the  defendant's  stove  an  infringement  of  the  complain- 
ant 's  patent  the  Court  ruled : — 

"To  infringe  a  patent  right,  it  is  not  necessary  that  the 
thing  patented  should  be  adopted  in  every  particular^ 
but  if  as  in  the  present  case,  the  design  and  figures  were 
substantially  adopted  by  the  defendants,  they  have  in- 

1 — Miller  v.  Smith,  5  F.,  359;  18  O.  G.,  1047;  1880  C.  D.  643. 

2- — Simpson  v.  Davis,  12  F.  145;  Perry  v.  Starrett,  3  Bann.  &  Ard. 
489;  1878  C.  D.  368;  Redway  et  al  v.  Ohio  Stove  Co.,  38  F.  582; 
Monroe  v.  Anderson,  58  F.  398;  Britton  v.  White  Mfg.  Co.,  61  F.93. 

3 — Root  V.  Ban  &  Davis,  F.  C.  12035. 


Novelty — Infringement  63 

fringed  the  plaintiff's  right.  If  they  adopt  the  same 
principle  the  defendants  are  guilty.  The  principle  of  a 
machine  is  that  combination  of  mechanical  powers  which 
produce  a  certain  result;  and,  in  a  case  like  the  present, 
where  ornaments  are  used  for  a  stove,  it  is  an  infringe- 
ment to  adopt  the  design  so  as  to  produce,  substantially, 
the  same  appearance." 

In  the  Grorham  case,  supra,  this  same  test  was  applied; 
not  identity  but  substantial  similarity  was  all  that  was 
required  to  establish  infringement  or  negative  novelty. 

Although  two  designs  are  easily  distinguishable  when 
placed  side  by  side,  if  they  are  so  nearly  alike  that  an 
ordinary  purchaser  giving  such  attention,  as  is  usually 
given,  would  be  deceived,  infringement  is  established^. 

The  Court  of  Appeals  of  the  District  of  Columbia  in  the 
case  of  in  re  Freeman^  found  some  differences  between 
a  patented  device  and  the  device  shown  in  the  applica- 
tion, but  held  a  patent  properly  refused  on  the  ground 
that  the  differences  were  not  substantial.  To  the  same 
effect  was  the  ruling  in  the  case  of  in  re  Schraubstadter^. 
The  Court  found  that  there  were  differences  between  ap- 
plicant's font  of  type  and  the  art  but  said  that  as  these 
differences  were  small  and  would  hardly  be  appreciated 
by  the  ordinary  ol)server,  the  test  applied  in  the  Gorham 
case  negatived  novelty  of  applicant 's  design. 

This  subject  is  well  discussed  with  a  citation  of  author- 
ities in  the  case  of  Tompkinson  v.  Willets  Mfg.  Co.^: — 

"In  approaching  this  subject  (the  question  of  infringe- 
ment) the  rule  with  reference  to  design  patents  should 
be  kept  steadily  in  view.     It  is  by  no  means  necessary 

1 — Priedberger-Aaron  Mfg.  Co.  v.  Chapin,  1.51  F.,  264. 

2 — 109  O.  G.,  1339;   1904  C.  D.  619. 

3 — 120  O.  G.,  1167;   1906  C.  D.  541. 

4 — 23  P.,  895;  32  O.  G.,  382;  1885  C.  D.  365. 


64:  Patents  for  Designs 

that  the  patented  thing-  should  be  copied  in  every  partic- 
ular. If  the  infringing-  design  has  the  same  general  ap- 
pearance, if  the  variations  are  slight,  if  to  the  eye  of  the 
ordinary  person  the  two  are  substantially  similar,  it  is 
enough.  It  is  of  no  consequence  that  persons  skilled  in 
the  art  are  able  to  detect  differences.  Those  who  have 
devoted  time  and  study  to  the  subject,  who  have  spent 
their  lives  in  dealing  in  articles  similar  to  those  in  con- 
troversy, may  see  at  a  glance  features  which  are  wholly 
unimportant  and  unobserved  by  those  whose  pursuits  are 
in  other  directions,  and  who  are  attracted  only  by  gener- 
al appearances.  If  the  resemblance  is  such  that  a  purch- 
aser would  be  deceived,  it  will  not  aid  the  infringer  to 
show  that  he  has  deviated  slightly  from  a  straight  line 
in  one  place  and  from  a  curved  line  in  another,  or  that  he 
has  added  or  omitted  something  which  an  expert  can  dis- 
cover. (Gorham  Co.  v.  White,  14  Wall.  511;  Lehnbeuter 
V.  Holthaus,  105  U.  S.  94;  Wood  v.  Dally,  7  F.  475;  Sim. 
Pat.  218;  Walh,  Pat.  Sec.  375)  ". 

In  a  recent  well  considered  case^,  in  determining  the 
question  whether  respondent's  lamp  shade  infringed  the 
complainant's  shade  the  Court  said: — 

"The  principles  upon  which  we  may  determine  this 
controversy  as  to  infringement  are  the  same  as  those  we 
have  referred  to  for  the  purpose  of  determining  the  valid- 
ity of  the  patent,  except  perhaps,  as  to  the  use  of  expert 
testimony  and  observation  of  the  manufactured  article 
in  use." 

After  quoting  from  several  cases^  which  lay  down  the 
tiTie  rules  to  be  followed,  the  decision  concludes:  — 


1 — Macbeth-Evans  Glass  Co.  v.  Rosenbaum  Co.,  199  F.  154-164. 

2 — Gorham  v.  White,  14  Wall.,  511;  Ripley  v.  Elson,  49  F.  927; 
Hutter  V.  Broome,  114  F.  655;  Frieberger  Aaron  Mfg.  Co.  v.  Chapin, 
151  F.  264;  Scofield  v.  Browne,  158  F.  305;  Graff  v.  Webster,  195 
F.  522;  .Jennings  v.  Kibbe,  10  F.  669. 


Novelty — Infringement  65 

"The  true  tests  of  identity  are  therefore,  first,  same- 
ness of  appearance;  second,  the  eye  of  the  ordinary  ob- 
server, an  observer  of  ordinary  acnteness  brina^ing  to  the 
examination  of  the  article  upon  which  the  design  has 
been  placed  that  degree  of  observation  which  men  of 
ordinary  intelligence  give." 

The  Court  further  pointed  out  that  in  the  case  at  bar 
it  was  proper  in  determining  the  question  of  infringe- 
ment to  take  into  consideration  the  appearance  of  the 
shades  when  lighted  up  as  they  would  be  in  use.  This 
was  so  held  the  Court  said  in  accordance  with  sound  reas- 
oning on  the  authority  of  the  ruling  in  Phoenix  Knitting 
Works  V.  Hygienic  Fleeced  Underwear  Co.^ 

The  different  manner  of  determining  the  question  of 
identity  of  desig-n  and  infringement  was  further  stated 
in  this  way: 

"In  determining  the  validity  of  a  patent  whether  two 
designs  are  identical  is  to  be  determined  by  examining 
the  drawings  and  the  manufactured  article,  and  that  it  is 
only  in  determining  this  question  of  infringement  that 
we  may  resort  to  and  consider  the  design  in  use." 

In  the  case  of  Smith  v.  AVhitman  Saddle  Co.-,  however, 
it  was  held  that  the  defendant's  saddle  did  not  infringe 
because  of  the  marked  differences  between  its  saddle  and 
complainant's  saddle  in  the  one  feature  which  was  not 
old  in  the  saddle  art.  The  dissimilarity  was  so  marked  as 
to  produce  a  substantial  difference  in  appearance. 

It  is  not  sufficient  to  show  that  all  the  important  ele- 
ments which  constitute  a  design  are  old;  these  may  be  so 
arranged  as  to  produce  an  entirely  new  entity^. 

1 — 194  P.  696. 

2 — 148  U.  S.,  678;  63  O.  G.,  912;   1893  C.  D.  324. 

3 — Walker  on  Patents,  Sec.   64. 


66  Patents  foe  Designs 

28.  Character  of  Evidence  Which  Negatives  Novelty 
or  Establishes  Infringement. — Novelty  is  not  negatived 
by  the  evidence  of  experts  to  the  effect  that  two  designs 
were  produced  by  the  same  process  or  method  nor  by  the 
statement  of  such  witnesses  that  the  designs  present  a 
similarity  of  appearance  due  to  features  or  characteris- 
tics which  are  discoverable  to  such  witnesses  but  which 
would  not  be  apparent  to  the  ordinary  purchaser  or  user 
of  such  articles.  Courts  have  repeatedly  held  that  nov- 
elty was  negatived  by  showing  that  the  ordinary  observ- 
er would  mistake  one  design  for  another  which  was  old. 
Evidence  to  be  successfully  used  in  negativing  novelty 
must  show  that  the  general  characteristics  of  two  designs 
are  the  same  and  that  these  would  produce  the  same  ef- 
fect on  the  ordinary  beholder. 

The  testimony  of  experts  is  held  in  most  decisions  in 
design  cases  not  admissible  to  determine  the  question 
of  novelty  or  infringement.^ 

In  the  case  of  Kraus  v.  Fitzpatrick-,  these  succinct 
statements  bearing  directly  on  the  character  of  evidence 
required  upon  the  question  of  infringement  and  novelty 
are  made : — 

"The  test  of  infringement  of  a  design  patent  appears 
to  be  the  question  of  such  similarities  as  will  lead  ordi- 
narv  persons  to  think  the  articles  in  question  are  the 
same,  (Gorham  v.  White,  14  Wall.  511;  Jennings  v.  Kibbe, 
10  F.  669).  The  test  of  novelty  would  therefore  appear 
to  be  the  existence  of  such  dilferences  between  articles 
embodying  the  patented  designs  and  those  existing  before 
as  would  be  recognized  by  the  same  class  of  persons. 
(Lehnbeuter  v.  Holthaus,  105  U.  S.,  94). 


1 — ^Gorham  v.  White,  14  WaU.  511;  Schraubstadter,  120  O.  G., 
1167;  1906  C.  D.  541;  Ripley  v.  Elson  Glass  Co.,  49  F.  927;  60  O.  G. 
298;   1892  C.  D.  467. 

2 — 34  F.  39;  42  O.  G.,  1292;   1888  C.  D.  291. 


Novelty — Infringement  67 

29.  Illustrative  Cases.— In  the  early  case  of  Jennings  v. 
Kibbe^  Justice  Blatchford  in  the  absence  of  testimony  by 
the  defendant  on  the  question  of  identity  compared  the 
nubia  made  by  the  defendant  with  the  patent  and  found 
infringement  to  exist.  He  was  of  the  opinion  that  this 
practice  could  not  be  extended  to  other  patents  and  not 
to  al]  design  cases.  A  design  for  jewelry  settings  was  the 
subject  of  the  suit  in  Wood  v.  Dolby^.  The  evidence  pre- 
sented to  establish  lack  of  novelty  did  not  show  the  pat- 
ented design  in  appearance,  outline  or  detail.  The  Court 
therefore  held  that  novelty  was  not  negatived.  The  de- 
fendant's device  in  this  case  differed  from  the  patent  in 
several  minor  respects.  These  differences,  the  Court 
said,  did  not  change  the  artistic  effect,  and  considered  as 
desirable  ornaments  were  immaterial.  The  patent  on 
which  the  suit  was  brought  in  the  case  of  Perry  v.  Star- 
rett^  was  for  a  stove  which  the  evidence  showed  was  old 
as  to  several  of  its  parts  and  ornamentations.  This 
proved,  the  defendant  contended,  that  the  complainant's 
stove  was  a  mere  aggregation  and  not  patentable.  Upon 
this  point  the  Court  said:-- 

"If  all  the  patentees  did  was  to  take  the  legs  of  the 
Smith  stove,  the  base  of  the  Lighthouse,  the  ash  pit  and 
mica  sections  of  the  Smith  stove,  the  reservoir  and  top 
of  the  American  and  the  urn  of  the  Oriental,  and  join 
them  together,  it  is  also  clear  that  they  did  nothing  en- 
titling themselves  to  a  patent.  (Burriss  v.  Woodruff,  4 
Wash.  48;  Wooster  v.  Crane,  2  Fisher  584).  Or,  if  they 
did  no  more  than  to  join  them  together  with  such  adap- 
tations to  each  other  as  would  be  made  by  the  exercise  of 
the  ordinary  skill  of  workmen  in  that  trade,  probably 
they  did  not.    But  the  evidence  shows  that  they  did  much 


1 — 10  F.,  669. 

2 — 7  F.,  475;   20  O.  G.,  523;   1881  C.  D.  340. 

3 — 3  Bann.  &  Ard.,  489;   14  O.  G.,  599;   1878  C.  D.  368. 


68  Patents  for  Designs 

more  than  either.  Although  the  legs  of  the  Argand  and 
of  the  Smith  stove  are  cyma  reversa  in  general  form, 
those  of  the  Argand  are  quite  different  from  the  others  in 
proportion  and  style.  The  base  of  the  Argand  is  not  ex- 
actly like  that  of  the  Lighthouse.  The  curves  of  its  ash- 
pit section  are  different  from  those  of  that  section  of  the 
Smith  stove.  The  lower  mica  section  of  the  Smith  stove 
is  convex  below  and  concave  above  in  outward  form, 
while  that  of  the  Argand  is  slightly  convex  throughout. 
The  lines  and  curves  of  the  mica  section  of  the  Argand 
are  different  from  those  of  the  Smith  stove,  and  in  the 
Argand  the  rear  extension,  to  include  the  exit  pipe,  is 
carried  upward  on  that  section,  while  in  the  Smith  stove 
it  is  not.  And  the  top  and  the  urn  of  the  Argand  differ 
somewhat  from  those  of  either  the  Lighthouse  or  the 
Oriental. 

All  these  parts  were  made  symmetrical  of  themselves 
and  in  respect  to  each  other,  and  connected  together  with 
appropriate  devices,  and  formed  into  a  harmonious  whole 
in  a  manner  that  could  not  be  done  without  inventive 
genius  and  creative  skill.  The  result  was  different  from 
anything  used  or  known  before." 

The  Court  therefore  said  that  the  new  form  and  the 
new  ornamentation  together  made  up  a  valid  design.  It 
requiring  study  of  the  differences  and  fixing  them  in  the 
mind,  to  be  able  to  distinguish  the  defendant's  stove 
from  the  design  of  the  patent  when  they  were  not  consid- 
ered side  by  side  although  there  were  minor  differences 
of  form  and  ornamentation,  it  was  held  that  the  defend- 
ant infringed.  This  decision  is  important  in  that  it 
points  out  that  the  test  of  infringement  is  not  properly 
made  by  placing  the  patented  and  alleged  infringing  de- 
vice side  by  side;  such  a  test  is  too  severe  on  the  validity 
of  the  patent. 


Novelty — Infringement  69 

111  ilic  case  of  Miller  v.  Siiiith^  the  Court  was  advised 
relative  to  the  nature  of  the  ])atented  design  and  of  the 
exhibits  and  pnblieations  placed  in  evidence  by  expert 
witnesses.  In  this  ease  much  stress  was  laid  on  the  state- 
ments of  the  expert. 

The  case  of  Dukes,  Receiver,  etc.  v.  Bauerle  et  al-  is  of 
interest  for  the  reason  that  the  Court  points  out  the  va- 
rious details  of  the  design  ]>atents  in  suit  which  were  for 
sewing  machine  cases  and  also  the  art  in  view  of  which 
the  ]3atents  were  said  to  be  lacking  in  novelty. 

A  close  question  of  similarity  of  designs  is  presented 
in  the  case  of  Frank  v,  Hess^.  The  Court  found  two  de- 
signs for  caps  in  both  of  which  the  same  general  style  of 
ornamentation  was  used  so  different  that  when  placed 
side  by  side  and  held  in  a  certain  way  the  effect  was  not 
the  same.  Infringement  was  therefore  not  established. 
The  patent  in  this  case  was  strictly  limited  to  the  design 
shown. 

A  design  patent  for  trimming  for  underwear  was  al- 
leged to  be  infringed.  This  trimming  consisted  of  three 
elements,  two  of  which  were  well  known  and  old  in  the 
art.  The  difference  between  this  new  element  in  the  de- 
fendant's trimming  and  the  same  element  in  the  patent 
was  slight  the  Court  said  in  Byram  v.  Friedberger*,  but 
as  these  differences  could  be  discerned  and  changed  the 
pattern,  the  patent  was  held  not  infringed. 

Novelty  was  negatived  the  Court  decided  in  Welker 
V.  Weller'"'  by  showing  that  the  prominent  features  of  the 
complainant's  design  were  old. 

The  character  of  evidence  which  is  regarded  as  insuf- 
ficient to  negative  novelty  was  carefully  reviewed  in  the 


1 — 5  F.,  359;  18  O.  G.,  643;  1880  C.  D.  643. 
i;-^41  F.,  783;  51  O.  G.,  805;  1890  C.  D.  311. 
3 — 84  F.,  170;  82  O.  G.,  1566;  1898  C.  D.  397. 
4 — 100  F.,  963;  82  O.  G.,  1420;  1898  C.  D.  380. 
3 — 73  F.,  299;  75  O.  G.,  185;  1896  C.  D.  307. 


70  Patents  for  Designs 

case  of  Redway  v.  Ohio  Stove  Co.^  In  this  case  the 
Court  referred  to  the  fact  that  when  parts  of  the  stove  of 
the  patent  were  placed  by  the  side  of  one  of  the  parts  of 
the  designs  which  were  said  to  negative  novelty,  the  dif- 
ferences were  apparent  to  a  casual  observer.  In  this  case 
infringement  was  found  because  of  the  same  general  ap- 
pearance of  the  defendant 's  design  and  the  design  of  the 
patent  although  several  features  of  ornamentation  were 
omitted  by  the  defendant.  The  use  of  the  name  of  the 
defendant  on  its  stove  conspicuously  displayed  did  not  re- 
lieve the  defendant  from  liability  as  an  infringer.  The 
court  thought  the  practice  in  this  regard  should  be  the 
.same  as  in  trademark  cases  citing  Menendez  v.  Holt.^ 

30.  Effect  of  Same  Design  in  Another  Art. — A  design 
is  anticipated  if  found  to  be  old  in  an  art  not  analogous  to 
that  to  which  it  belongs.  As  invention  is  not  shown  in 
taking  an  object  old  in  one  art  and  using  it  in  another^, 
BO  also  is  novelty  wanting  in  a  design  which  is  disclosed  in 
an  art  entirely  different  from  the  art  to  which  it  belongs. 
Accordingly  the  C^ircuit  Court  for  the  District  of  Rhode 
Island  in  the  case  of  Foster  v.  Crossin^,  refused  to  sustain 
a  patent  for  a  jewelry  pin  consisting  of  the  representation 
of  a  spoon  which  was  made  in  accordance  with  the  design 
of  a  spoon  shown  to  be  well  known  in  the  spoon  art. 

No  decision  of  a  Federal  Court  has  however  been  found 
in  which  the  direct  issue  was  whether  a  complainant 
could  prevent  the  infringement  of  his  design  by  the  use 
by  the  defendant  of  the  same  design  in  an  art  entirely 
different  from  that  to  which  the  complainant's  design  be- 
longed. A  question  of  this  kind,  for  instance,  has  not 
been  authoritatively  answered.  Is  an  ornamental  design 
for  a  drinking  glass  infringed  by  the  use  of  the  same  de- 

1 — 38  F.,  582. 

2—128   U.   S.,   514. 

3 — Section  23. 

-1 — 44  F.,  62;  54  O.  G.,  1115;  1891  C.  D.  304. 


Non-Analogous  Arts  71 

sign  by  another,  on  an  automobile  door;  or  is  a  design  for 
a  lamp  shade  infringed  by  the  use  of  the  same  design  for 
a  door  knob? 

In  the  case  of  Wooster  v.  Crane^  a  patent  for  a  reel  for 
containing  ruffle  trimming,  etc.,  was  held  invalid  on  the 
ground  that  the  shape  which  was  that  of  a  rhombus  was 
old  in  many  articles  of  manufacture,  although  not  old  as 
an  ornamental  reel.  This  ruling  was  followed  by  the 
Commissioner  of  Patents  in  the  case  of  Bennage  v.  Phil- 
lippi-  in  which  he  refused  to  grant  design  patents  for  a 
toy  bank  and  for  a  paper  weight,  both  in  the  form  of  the 
Memorial  Hall  at  the  Centennial  Exposition.  The  ap- 
plicants claimed  that  the  designs  were  for  different 
articles  of  manufacture,  articles  for  non-anagolous  pur- 
poses, and  that  as  the  designs  were  new  as  applied  to 
those  particular  articles,  both  should  be  granted  a  patent. 
The  Circuit  Court  for  the  Eastern  District  of  Michigan, 
approved  the  ruling  of  the  Patent  Office  in  rendering  a 
decision  in  Northrup  v.  Adams^. 

The  ruling  in  Bennage  v.  Phillippi,  supra,  was  followed 
by  the  Patent  Office  in  Leigh  v.  Saart^,  and  ex  parte 
Knothe^.  In  the  last  case  the  Commissioner  of  Patents 
stated : — 

"In  designs  the  doctrine  of  double  use  is  not  limited 
to  the  selection  of  devices  in  the  same  or  analogous  me- 
chanical arts,  since  relating  solely  to  shape  or  appear- 
ance the  mechanic  in  producing  a  design  may  avail 
himself  of  old  shapes  wherever  they  are  found,  and  for 
whatever  purpose  they  were  before  used. ' ' 


1 — F.  C.  18036. 

2 — 9  o.  G.,  1159;  1876  C.  D.  135. 

3 — F.  C.  10328;  12  O.  G.,  430;  1877  C.  D.  332. 

4 — 101  O.  G.,  663;  1902  C.  D.  367. 

5 — 102  O.  G.,  1294;  1903  C.  D.  42. 


72  Patents  for  Designs 

This  was  the  doctrine  announced  by  Mr.  Simonds^  and 
approved  in  Western  Electric  Mfg.  C.  v.  OdelP.  In  the 
case  of  Untermeyer  v.  Frennd  this  statement  though 
obiter  is  made : — 

''If  the  patented  design  consisted  in  a  transfer  of  an 
old  form  which  had  existed  upon  something  else  to  a 
watch  case,  or  in  the  mere  adaptation  by  imitation  of  a 
pre-existing  form  to  a  watch  case,  it  would  not  have  been 
an  invention."^ 

In  the  cases  of  Bevin  Bros.  v.  Star  Bros.  Bell  Co.,^ 
and  Charles  Boldt  Co.  v.  Nivison-Weiskopf  Co.^  the 
Court  considered  as  negativing  novelty  of  the  designs 
in  suit  various  ornamental  objects  in  arts  non-analogous 
to  arts  to  which  the  patented  designs  belonged. 

31.  State  Of  The  Art.— The  questions  of  novelty  and 
infringement  are  dependent  upon  the  "state  of  the  art" 
in  design  cases  as  well  as  in  mechanical,  although  not  so 
much  stress  can  be  placed  upon  it  partly  for  the  reason 
that  a  design  is  not  an  ' '  improvement ' '  as  this  term  is  un- 
derstood in  the  patent  law.  Repeated  reference  is,  how- 
ever, found  in  the  decisions  to  the  state  of  the  art.  The  case 
of  Sutro  Bros.  Braid  Co.  v.  Schloss  et  aP  is  an  example. 
The  plaintiff's  patented  braid  was  a  three  ribbed  design 
having  something  of  the  general  appearance  of  a  trefoil. 
The  evidence  showed  that  ribbed  braid  was  old  in  the  art. 
The  defendants  four  ribbed  braid  was  declared  not  an 
infringement  for  a  broad  construction  could  not  be  given 

1 — Simonds  on  Designs,  p.  212. 

2 — 18  F.,  321. 

3 — 58  F.,  205;  65  O.  G.,  1767;  1893  C.  D.  664. 

4 — 114  F.,  362. 

5 — 194  F.,  871. 

6 — 44,  F.  356. 


State  of  the  Art  73 

the  patent  in  view  of  the  state  of  the  art.  A  patent  for 
a  lamp  resembling  a  tulip  conventionalized  was  entitled 
to  a  broad  construction  as  it  was  new  as  shown  by  the 
state  of  the  art  presented  to  the  court.  This  was  the 
ruling  in  Britton  v.  White  Mfg.  Co.^  Care  must  be  exer- 
cised however  in  considering  the  state  of  the  art  for  the 
purpose  of  negativing  novelty.  Even  if  features  of  a 
design  are  old,  it  may  be  that  the  new  additional  feature 
makes  the  design  distinct  and  novel  over  the  art^. 

The  doctrine  is  well  illustrated  in  the  case  of  Unter- 
meyer  v.  Jeannot  et  al.^  The  design  was  for  a  watch 
case  which  was  decorated  with  a  locomotive  engine  and 
tender  upon  a  railroad  track  with  ornamental  plants  all 
surrounded  by  a  ring  of  dots  and  an  ornamental  border. 
The  art  showed  watch  cases  ornamented  with  locomotives 
and  tenders  on  railroad  tracks.  The  Court  pointed  out 
that  with  this  state  of  the  art  existing,  the  patentee 
could  not  be  protected  except  from  infringement  of  his 
peculiar  design.  In  the  case  of  Hugh  W.  Collender  v. 
Wm.  H.  Griffith^  the  Court  said  that  the  design  patent 
for  a  billiard  table  should  never  have  been  issued  in  view 
of  the  state  of  the  art  disclosed.  Giving  the  limited  con- 
struction to  the  patent  required  by  the  state  of  the  art 
resulted  in  holding  that  the  defendant  did  not  infringe 
in  the  case  of  Meers  v.  Kelly^  There  are  other  references 
to  this  subjects  The  state  of  the  art  is  a  limitation  of  a 
design  claimed  notwithstanding  the  claim  is  in  the  con- 
ventional form;  that  is,  the  design  shown  in  the  drawing. 

Another  illustration   of  a   design  patent   receiving  a 
limited  construction  in  view  of  the  state  of  the  art  is 


1 — 61,  F.   93-96. 

2 — Fen  ton-Sec.   4,  and  cases  cited. 
3 — 20  F.,  503. 

4 — Reported  in  Fenton  on  Designs,  p.  83. 
5 — 31  F.,  153. 

6 — Dukes,  Receiver  v.  Bauerle  et  al.   41   F.,  783;    51  O.  G.,  805; 
1890  C.  D.  311. 


74  Patents  for  Designs 

afforded  in  the  case  of  Croker  v.  Power  Co.^  The  plain- 
tiff's design  for  an  easel  was  restricted  to  the  particular 
desio-n  disclosed  in  the  specification  in  view  of  what  was 
old/ 

The  state  of  the  art  as  bearing  on  the  question  of  the 
construction  to  be  given  to  complainant's  design  was  dis- 
cussed in  the  case  of  Britton  v.  White  Mfg.  Co.^,  it  being 
held  that  a  monthly  magazine  was  a  printed  publication 
which  might  be  admitted  to  show  the  state  of  the  art. 

The  state  of  the  art  disclosed  in  the  Whitman  case^ 
showed  that  it  was  customary  to  vary  the  shape  of  sad- 
dles to  suit  purchasers.  This  lack  of  novelty,  due  to  the 
state  of  the  art,  was  an  important  fact  in  reaching  the 
conclusion  that  infringement  did  not  exist. 

The  "state  of  knowledge,"  as  it  is  called  in  the  English 
texts  is  regarded  as  an  important  element  in  determining 
infringement^. 

32.  Common  Knowledge.— Courts  will  take  judicial 
notice  of  matters  of  common  knowledge  in  design  cases 
as  in  other  patent  cases  in  determining  the  question  of 
novelty  of  a  design^  In  the  case  of  Eclipse  Mfg.  Co.  v. 
Adkins^,  the  Court  pointed  out  to  what  extent  common 
knowledge  might  be  relied  upon  to  defeat  a  patent.  The 
judge  must  not  act  as  an  expert  or  on  special  knowledge 
he  may  have.    The  decision  states: — 

"I  am  free  to  say  that  I  should  not  feel  justified  in 
holding  a  patent  void  for  want  of  novelty  on  common 
knowledge,  unless  I  could  cite  instances  of  common  use 

1 — 29  F.,  456. 

2 CI      ■p         QQ 

3— Smith  V.  Whitman  Saddle  Co.  148  U.  S.,  678;  63  O.  G.,  913; 
1893  C.  D.  324. 

4 — Swan,  Patents,  Designs  and  Trademarks,  p.  271  and  cases 
cited. 

5 — Fenton,  p.  71;  Bevins  Bros.  Mfg.  Co.  v.  Starr  Bros.  Bell  Co.  114, 
F.,  362. 

6 — 36  F.,  554. 


Common  Knowledge  76 

which  would  at  once,  on  the  suggestion  being  made, 
strike  persons  of  usual  intelligence  as  a  complete  answer 
to  the  claim  of  such  a  patent." 

In  the  case  of  Western  Electric  Mfg.  Co.  v.  OdelP,  the 
patent  in  suit  was  held  invalid  on  demurrer,  the  court 
ruling  that  it  was  matter  of  common  knowledge  that  it 
was  old  to  decorate  the  face  of  a  dial  in  the  way  the 
patentee  had  ornamented  the  face  of  his  dial  plate. 

In  the  case  of  Britton  v.  White  Mfg.  Co.^  the  court  took 
judicial  notice  of  common  knowledge  as  to  the  shape  of 
certain  flowers  in  determining  the  validity  and  scope  of 
the  complainant's  patent.  Novelty  of  a  bell  was  nega- 
tived by  the  common  knowledge  of  the  general  public  of 
which  the  court  availed  itself^. 

33.     Generic  Idea  of  Ornamentation. — In  one  of  the 

earliest  reported  decisions  of  the  Patent  Office^,  it  was 
held  that  a  patent  might  be  issued  for  a  generic  design 
and  that  a  specific  patent  might  be  issued  for  every 
variety  and  species  of  that  design  which  would  be  tribu- 
tary and  subordinate  to  the  patent  covering  the  genus. 
This  rule  like  many  others  which  have  been  announced 
has  not  been  uniformly  followed.  If  it  had  been  many 
perplexing  questions  which  have  arisen  and  which  are 
now  unsettled  might  have  been  avoided. 

Mr.  Simonds  was  of  the  opinion  that  the  test  applied 
by  the  Supreme  Court  in  the  Gorham  case^  gave  a 
generic  effect  to  some  claims  even  if  the  claims  were  not 
generic  in  form<^.  He  pointed  out  that  if  the  test  of 
similarity  was  the  observation  of  an  ordinary  purchaser, 

1 — 18  F.,  321. 

2 — 61  F.,  93. 

3 — Bevin  Bros.  Mfg.  Co.  v.  Starr  Bros.  Bell  Co.  144  F.  362. 

4 — Bartholomew,  1869   C.  D.,  103. 

5 — Gorham  Mfg.  Co.  v.  White,  14  Wall.  511. 

6 — Simonds,  pp.   198-199-203. 


76  Patents  for  Designs 

designs  specifically  different  would  be  held  to  be  the 
same.  The  generic  construction,  however,  must  cease 
when  the  differences  are  sufficient  to  be  discerned  by  the 
character  of  person  described.  The  conclusion  reached 
by  this  authority  was  that,  "A  design  patent  can  not 
be  allowed  for  a  design  which  is  tributary  to  another, 
or  a  mere  improvement  thereon,  and  not  in  substance 
unlike  it." 

In  the  case  of  ex  parte  Gerard^  it  was  definitely  denied 
that  the  doctrine  of  genus  and  species  as  understood  in 
mechanical  cases  applied  to  designs.  In  this  case  a 
lengthy  discussion  of  the  subject  appears,  in  which  is 
this  statement: — 

"Claims  for  distinctive  and  segregable  i)arts  of  a  design 
indicate  the  skilled  judgment  of  the  Office  as  to  what 
parts  and  features  of  the  design,  if  segregated  from  the 
whole  and  applied  to  an  article  of  manufacture,  would 
accord  with  the  eye  of  the  ordinary  observer,  and  pre- 
serve the  identity  of  the  original  and  entire  design.  Evi- 
dently such  claims  should  be  carefully  scrutinized;  other- 
wise the  applicant  may  in  the  same  patent  cover  a 
multiplicity  of  designs." 

There  are  many  other  decisions  of  the  Patent  Office 
holding  that  there  is  no  such  distinction  between  generic 
and  specific  design  patents  as  is  recognized  in  mechanical 

cases^. 

The  decisions  in  the  case  of  Cushman  v.  Lines^,  two  by 


t_43  O.  G.,  1235;  1888  C.  D.  37.  oo  r^  r. 

2— Hill  &  Renner,  82  O.  G.,  1988;  1898  C.  D.  38;  Adams,  83  O.  G.. 
1994-  1898  C.  D.  109;  Jenks,  83  O.  G.,  1513;  1898  C.  D.  81; 
Schraubstadter,  110  O.  G.,  2015;  1904  C.  D.  229;  Burdick,  97  O^  G., 
1373-  1901  C  D.  184;  Kurz,  113  O.  G.,  2215;  1904  C.  D.  o57; 
Little  Jr.,  160  O.  G.,  1272;  1910  C.  D.  227. 

3_77  O.  G.,  153;  1896  C.  D.  62;  78  O.  G.,  2051;  1897  C.  D.  346; 
79  O.  G.,  335;  1897  C.  D.  19. 


Generic  and  Specific  Designs  77 

the  Commissioner  of  Patents  and  one  by  the  Court  of 
Appeals  of  the  District  of  Columbia,  were  rendered  with 
the  view  apparently  that  the  generic  idea  of  configuration 
or  ornamentation  shown  was  old  when  Cushman  and 
Lines  came  into  the  field.  This  statement  is  not  directly 
made  but  the  decisions  are  easily  understood  with  this 
an  accepted  view. 

The  decisions  in  the  case  of  Ashley  v.  Samuel  C.  Tatum 
Co.^  have  been  variously  construed  and  have  received 
much  comment.  The  Circuit  Court  of  Appeals  found  that 
the  distinction  between  the  designs  could  be  discerned  by 
the  ordinary  purchaser  as  well  as  by  the  expert  when  the 
designs  were  considered  together  or  apart.  If  this  is  true 
the  patent  to  Hilles  in  accordance  with  which  Tatum 's  de- 
sign was  made  was  not  a  species  of  the  generic  ornamenta- 
tion discovered  by  Ashley.  This  view,  however,  leaves  for 
consideration  the  suggestion  which  arises  from  the 
language  of  the  ruling  rendered  by  the  Court  of  Appeals 
to  the  effect  that  if  the  complainant  had  secured  a  claim 
for  the  dominant  features  of  his  design  he  might  have 
protected  those  features  with  or  without  ornamentation, 
unless  the  ornamentation  was  carried  to  such  an  extent 
that  it  changed  the  effect  produced. 

34.  Penalty  for  Infringement — Act  of  February  4th, 
1887. — Minimum  damages  of  two  hundred  and  fifty  dol- 
lars are  fixed  by  the  Act  of  February  4tli,  1887,  for  know- 
ingly infringing  a  design  patent.  For  what  character 
of  infringement  this  amount  may  be  recovered  has  not 
been  consistently  decided.^  To  recover  under  this  Act 
the  infringement  must  have  been  committed  with  knowl- 
edge of  the  plaintift"'s  patent^.     The  Act  expressly  states 


1 — 181   F.,   840    (CO;    186   F.,   339    (CCA.) 

2 — Walker  on  Patents,  Sec.  571a  and  cases  cited. 

3 — Lichtenstein  v.  Straus  et  al   166   F.   319;    Dunlap  v.  Schofield, 
152,  U.  S.,  244. 


78  Patents  for  Designs 

that  if  the  profits  made  by  the  infringer  exceed  the  sum 
of  two  hundred  and  fifty  dollars  he  shall  be  liable  for  the 
excess  of  such  profits  above  that  amount. 


Chapter  V. 

APPLICATIONS  AND  LETTERS   PATENT. 

35.  Petition." — The  general  form  of  petition  required 
in  applications  for  mechanical  patents  is  used  in  making 
application  for  a  patent  for  a  design.  The  period  for 
which  the  grant  is  desired  must  be  set  forth,  and  instead 
of  the  request  that  a  patent  for  an  "improvement"  be 
granted,  the  prayer  should  be  for  a  new  and  original 
design. 

36.  Specification. — The  preamble  to  the  specification 
should  also  follow  the  usual  form  used  in  the  other 
character  of  patents.  Reference  should  then  be  made 
to  the  invention  as  "a  new,  original  and  ornamental 
design".  If  no  description  of  the  design  in  words  is 
given,  reference  should  be  made  to  the  drawing  as  a 
specification  of  the  invention. 

37.  Should  Specification  Contain  a  description  of  the 
Design? — As  the  provisions  of  4888  of  the  revised  statutes 
necessitate  the  filing  among  other  things  of  a  written 
description  of  the  invention  before  a  patent  may  be 
issued,  and  as  section  4933  makes  all  regulations  for 
obtaining  other  patents  applicable  to  designs  if  those 
regulations  are  not  inconsistent  with  the  provisions  of 
the  design  act,  it  would  appear  to  follow  that  the  specifi- 
cation in  a  design  case  must,  in  order  to  obtain  the  issue 
of  a  valid  patent,  contain  a  written  description,  for  it 
can  hardly  be  said  that  there  are  any  words  in  section 
4929  inconsistent  with  the  requirement  made  in  section 
4888. 

What  is  the  history  of  this  subjects  The  earliest 
issued  design  patents  contain  a  written  description.    Be- 


80  Patents  for  Designs 

cause  apparently  of  the  difficulty  of  describing  in  words 
some  designs,  it  soon  became  the  practice  to  refer  to  the 
drawing  as  the  specification  and  description  of  the  design. 
In  the  case  of  Untermeyer  v.  Jeannot^  decided  in  1884, 
the  invention  involved  in  the  suit  was  of  a  character 
difficult  to  describe  in  words.  The  specification  was 
accompanied  by  a  photograph  of  the  design  but  the 
imjDortant  features  were  not  described  except  by  name. 
The  limited  scope  given  the  patent  was  apparently  on 
account  of  the  absence  of  description  of  the  features 
which  the  complainant  claimed  had  been  infringed. 

Two  years  later  the  question  came  up  directly  whether 
a  design  patent  in  which  there  was  no  description  of 
the  design  except  the  drawing  was  valid.  Upon  this 
question  the  Supreme  Court  said : — 

"It  is  contended  that  Section  26  of  the  Act  of  July 
9,  1870,  applies  to  the  present  case.  That  section  pro- 
vides that  before  any  person  shall  receive  a  patent  for 
his  invention  or  discovery,  he  shall  file  in  the  Patent 
Office  a  written  description  of  it  and  'particularly'  point 
out  and  distinctly  claim  the  particular  improvement,  or 
combination  which  he  claims  as  his  invention  or  dis- 
covery. It  is  urged  that  Section  26  was  not  complied 
with  in  this  case,  and  that  the  patent  is  void  because  it 
contains  no  description  and  no  proper  claim.  But  we 
are  of  the  opinion  that  the  description  and  claim  are 
sufficient.  The  purport  of  the  description  is  that  what 
the  photographic  illustration  represents  as  a  whole  is  the 
invention.  It  is  that  which  is  claimed  when  applied  to 
carpeting.  The  design  is  a  pattern  to  be  worked  into  a 
carpet,  and  is  within  the  statute.  Claiming  the  configura- 
tion of  the  design  is  the  same  thing  as  claiming  the 
design  or  tlie  figure  or  the  pattern.     It  is  better  repre- 

1 — 20   F.   503. 


Description  81 

sented  by  the  photographic  illustration  than  it  conld  be 
by  any  description  and  a  description  would  probably  not 
be  intelligible  without  the  illustration.  *  *  *  *  i^  the 
present  case  the  design  is  sufficiently  identified  by  the 
illustration  without  the  aid  of  any  description.  In  the 
language  of  Section  72  (now  section  4930  revised  stat- 
utes) before  cited,  the  design  is  sufficiently  represented 
by  the  photograph."^ 

This  decision  has  been  repeatedly  referred  to  in  sub- 
sequent decisions  and  there  is  no  reported  case  in  which 
the  patent  was  held  invalid  simply  because  the  specifi- 
cation did  not  contain  a  ivritfeu  dpscription^. 

The  rules  of  the  Patent  Office  apparently  contemplate 
the  omission  of  a  word  description  of  the  design,  for  Rule 
82  which  specifies  the  order  of  arrangement  of  a  design 
specification  does  not  provide  for  a  detailed  description 
but  only  a  description  of  the  figures  of  the  drawing.  This 
interpretation  of  the  rules  is  further  emphasized  by  the^ 
statement  in  Rule  81  that  ''the  appearance  can  be  dis- 
closed only  by  a  picture  of  the  article". 

Shortly  after  the  design  act  had  been  amended  (May 
9,  1902,)  the  Patent  Office,  endeavored  to  cut  down  or 
eliminate  all  detailed  description  in  a  design  specification. 
In  the  case  of  ex  parte  Freeman,^  after  referring  to  the 
complete  description  of  the  design,  a  hose  supporter,  the 
Commissioner  said: — 

"This  descriptive  language  illustrates,  in  connection 
with  the  drawing  of  this  case,  the  utter  futility  of  at- 

1 — Dobson  V.  Dornan,  118  U.  S.  10. 

2 — Tompkins  Co.  v.  New  York  Woven  Wire  Mattress  Co.,  159  F. 
133;  Cheney  Bros.  v.  Weinreb  &  Weinred,  185  P.,  531;  157  O.  g', 
1002;  1910  C.  D.  262;  Ashley  v.  Tatum,  186  F.,  339;  Mygatt  v.  M. 
Schauffer-  Flauni  Co.,  186  F.,  343;  Phoenix  Knitting  Works  v.  Rich 
194  F.,  708;  Graff  Washbourne  &  Dunn  v.  Webster  189  F.,  9  02-905 

3 — 104  O.  G.,  1396;   1903  C.  D.   172. 


82  Patents  for  Designs 

tempting  by  words  to  describe  the  appearance  of  an  ob- 
ject which  may  be  perceived  immediately  upon  inspection 
of  a  picture  thereof.  In  designs  the  appearance  is  the 
new  thing  which  is  to  be  secured  by  the  patent.  Words  do 
not  explain,  but  rather  confuse,  when  added  to  the  dis- 
closure of  the  drawing.  For  this  reason  such  descriptive 
material  should  be  reduced  to  a  minimum,  or,  better  still 
entirely  eliminated  from  design  patent  descriptions". 

The  Court  of  Apjjeals  of  the  District  of  Columbia  in 
considering  this  ruling  on  appeal^  said  that  in  the  pres- 
ence of  the  picture  of  a  design  a  verbal  description  was 
generally  useless  and  often  confusing.  In  the  decisions 
in  the  cases  of  ex  parte  Goldsmith^,  and  ex  parte  Lloyd^, 
the  office  required  detailed  descriptions  of  the  design  to 
be  canceled,  holding  that  Rule  82  was  properly  interpret- 
ed to  mean  that  the  description  of  the  figures  of  the  draw- 
ing required  should  be  limited  to  a  statement  whether 
they  were  elevations,  plans  or  perspectives. 

In  the  case  of  ex  parte  Mygatt*  the  point  in  controversy 
was  whether  certain  description  of  the  design,  a  reflector, 
should  be  canceled.  The  Commissioner  said  the  descrip- 
tion related  to  the  mechanical  construction  of  the  device 
and  should  be  canceled.  Upon  appeaP  the  Court  of  Ap- 
peals of  the  District  of  Columbia  considered  the  question 
of  description  in  a  design  specification  and  claim  and  held 
that  while  in  many  cases  the  design  was  sufficiently  dis- 
closed in  the  drawing,  the  design  under  consideration 
and  many  others  required  a  description. 

The  practice  of  the  Office  which  for  a  while  was  decid- 
edly against  permitting  a  word  description  to  be  inserted 


1 — Freeman,  109  O.  G.,  1339;  1904  C.  D.  619. 
2 — 110  O.  G.,  309;  1904  C.  D.  152. 
3 — 112  O.  G.,  251;  1904  C.  D.  373. 
4 — 117  O.  G.,  598;  1905  C.  D.  243. 
.-. — 121  O.  G.,  1676;  1906  C.  D.  596. 


Description  83 

in  the  specification  has  been  both  approved^  and  con- 
demed^. 

While  it  has  never  been  held  that  a  design  patent  was 
invalid  because  it  did  not  contain  a  written  description  in 
addition  to  the  drawing,  and  probably  never  will  be  unless 
the  Supreme  Court  overrules  its  holding  in  Dobson  v. 
Dornan,^  it  is  clearly  permissible  and  the  right  of  the  ap- 
plicant, if  he  desires  to  exercise  it,  to  have  a  written  de- 
scription in  his  patent. 

The  scope  of  design  patents  has  often  been  limited  by 
a  lack  of  description  and  while  in  some  classes  of  designs 
a  description  may  be  confusing  and  therefore  undesirable, 
in  many  others  it  is  necessary  in  order  to  protect  adequa- 
tely the  right  of  the  inventor.  The  subject  matter  must 
be  considered  in  each  case.  A  safe  rule,  it  is  believed, 
would  be  to  resolve  the  doubt  in  close  cases  in  favor 
of  a  description.  If  the  design  is  a  complex  one  and  is  a 
slight  advance  in  the  art,  a  description  would  probably 
be  inadvisable ;  if,  however,  the  design  is  broadly  new  and 
has  prominent,  distinguishing  features,  a  description  is 
desirable.  It  is  not  a  question  whether  it  is  convenient 
for  the  Patent  Office  to  permit  a  description  of  the  design, 
but  whether  the  inventor  has  set  forth  his  invention  in  a 
form  not  prohibited  by  the  law.^ 

38.  Character  of  Description  Permissible. — As  appear- 
ance is  the  proper  subject  matter  of  a  design,  the  descrip- 
tion should  relate  clearly  to  that,  and  should  not  contain 
statements  relative  to  the  function  of  some  of  the  parts 

1 — Cheney  Bros.  v.  Weinreb  &  Weinreb,  185  P.  531;  1910  C.  D. 
262;  National  Casket  Co.  v.  New  York  &  Brooklyn  Casket  Co.,  185 
F.,  533. 

2 — Ashley  v.  Tatum,  186  F.,  339;  Phoenix  Knitting  Works  v.  Rich, 
194  F.,  708;  Tompkins  Co.  v.  New  York  Woven  Wire  Mattress  Co., 
159  F.,  133. 

3 — 118  U.  S.,  10. 

i — New  York  Belting  and  Packing  Co.  v.  The  New  Jersey  Car 
Spring  and  Rubber  Co.,  53  F.,  810;  62  O.  G.,  589;  1893  C.  D.  172; 
Lunken,  76  O.  G.,  785;  1896  C.  D.  22. 


84  Patents  for  Designs 

constituting  the  design^     In  the  case  of  ex  parte  L.  W. 
Fairchild-  the  Commissioner  of  Patents  said: — 

"All  description  of  the  mechanical  construction  of  the 
article  should  be  eliminated,  as  well  as  all  reference  to  its 
purpose  as  a  matter  of  utility.  All  matter  of  this  de- 
scription is  improper  in  a  design  patent." 

If,  however,  the  utility  of  features  of  a  design  may  be 
considered  in  determining  patentability,  it  is  not  clear 
why  those  features  may  not  be  described^.  The  character 
of  the  material  of  which  the  design  is  made  and  the  color 
of  the  material  are  not  elements  to  be  considered  in  a 
design  case  and  should  not  be  described^  ;  neither  is  size 
an  element^. 

The  Court  of  Appeals  of  the  District  of  Columbia  has 
recently  disapj^roved  the  attempts  to  make  the  result  or 
mechanical  function  of  a  device  an  element  of  the  design^. 
In  this  case  the  applicant  sought  to  have  a  claim  setting 
forth  results  alleged  to  have  been  obtained  by  a  certain 
character  of  structure. 

39.  Modifications  and  Variations. — There  has  been  no 
more  uniformity  in  the  practice  permitting  or  prohibiting 
a  description  of  modifications  or  variations  in  designs 
than  there  has  been  in  design  practice  in  many  other  re- 
spects. The  subject  was  considered  in  the  Bartholomew 
case^.    The  Commissioner  said  it  had  been  assumed  that 


1 — Diffenderfer,  1872  C.  D.,  154. 

2 — 1873  C.  D.  45.     See  also  Norton,  22  O.  G.  1205;  1882  C.  D.  14. 

3 — Tournier,  94  O.  G.,  2166;  1901  C.  D.  306;  Sherman,  154  O.  G., 
839;   1910  C.  D.  382. 

4 — Traitel,  25  O.  G.,  783;  1883  C.  D.  92;  Weinberg,  1871  C.  D., 
244;  Post  V.  Richards  Hardware  Co.,  26  F.,  618;  35  O.  G.,  1226; 
1886  C.  D.  247. 

5 — Tyler  v.  St.  Amand,  17  App.  D.  C.  464;  94  O.  G.  1969;  1901 
C.  D.  301. 

0 — Mygatt,  39  App.  D.  C.  432;   188  O.  G.  1055. 

7 — 1869   C.  D.,   103. 


Modifications  and  Variations  85 

the  uniform  practice  of  the  Office  had  been  to  consider 
any  variation  however  slight  a  new  design,  but  that  in- 
vestigation showed  this  was  not  true,  calling  attention  to 
the  practice  of  granting  patents  for  fonts  of  type,  sets  of 
silver  phite,  a  series  of  miniature  shoulder  straps  and  a 
monagram  which  might  be  varied.  The  conclusion  was 
that  a  patent  might  be  granted  for  a  new  genus  or  class  of 
ornaments  and  for  species  and  varieties  of  the  genus. 
This  practice  appears  to  have  been  questioned  in  ex  parte 
Gerard^ 

These  decisions  were  followed  by  others  which  directly 
held  that  it  was  improper  to  permit  a  description  of 
variations  or  modifications  in  a  design  specification^.  In 
the  Finck  case  the  Commissioner  pointed  out  that  the 
claim  in  a  design  patent  covers  the  specific  thing  and 
that:— 

"What  range  or  scope  a  claim  in  a  design  patent  has 
under  this  principle  of  law  is  a  question  to  be  determined 
by  the  courts  and  not  by  the  Patent  Office,  and  in  view  of 
this,  it  is  thought  not  to  be  proper  for  the  Office  to  permit 
the  issue  of  a  design  patent  which  on  its  face  purports 
to  cover  an  indefinite  variety  of  modifications  which  may 
or  may  not  be  within  the  proper  scope  of  the  claim,  as 
that  matter  shall  be  determined  by  the  courts. ' ' 

The  holding  in  these  cases  was  overruled  in  the  case  of 
ex  parte  Bark^,  and  it  was  then  decided  that  modifica- 
tions might  be  shown  and  described.  This  view  was  ap- 
proved in  ex  parte  Lunken*.  In  the  Lunken  case  the 
view  expressed  was  that  variations  might  be  described 


1 — 43  O.  G.,  1235;  1888  C.  D.  37. 

2 — Hess  &  Hess,  56  O.  G.,  1334;  1891  C.  D.  142;  Petzold,  55  O. 
G.,  1652;  1891  C.  D.  97;  57  O.  G.  1277;  1891  C.  D.  207;  Finck,  60 
O.  G.,  157;  1892  C.  D.  139. 

3 — 69  O.  G.,  369;  1894  C.  D.  108. 

4 — 76  O.  G.  785;  1896  C.  D.  22. 


86  Patents  for  Designs 

if  they  did  not  destroy  or  change  the  unity  of  the  design. 
This  quotation  shows  the  attitude  of  the  Office : — 

"Variations  are  covered  by  a  design  patent  within  the 
hokling  of  the  Court  in  Ripley  v.  Elson  Glass  Co.  (60  0. 
G.  298;  49  F.  927)  in  the  opinion  of  Mr.  Justice  Jackson. 
If  the  variations  are  within  the  scope  of  a  design  patent 
when  the  patent  is  before  the  court,  it  is  presumed  that 
the  Office,  to  the  extent  of  its  jurisdiction,  should  apply 
the  same.  This  would  seem  to  be  an  additional  safeguard 
to  the  patentee  and  the  public  alike. ' ' 

The  Office  soon  began  to  lean  the  other  way  and  in  a 
line  of  decisions  finally  reached  the  conclusion  that  no 
modification  or  variation  should  be  described^.  In  some 
of  these  cases  the  statement  is  made  that  the  doctrine  of 
genus  and  species  is  not  recognized  in  design  cases^. 

40.  Essential  and  Immaterial  Features. — It  is  usual  to 
say  that  a  statement  of  what  constitutes  an  essential  and 
what  an  immaterial  element  in  the  description  in  a  design 
specification  is  not  permissible.  What  is  meant  by  this 
rule  however  is  not  that  these  words  may  not  in  any  case 
be  used  in  a  design  specification,  but  that  their  use  in 
such  a  manner  that  they  will  indicate  that  the  structure 
shown  in  the  drawing  is  not  all  a  part  of  the  design  or  is 
not  necessary  to  constitute  the  design  is  objectionable. 
The  words  which  are  commonly  used  to  point  out  certain 


1 — Coe,  81  O.  G.,  2086;  1897  C.  D.  187;  Hill  &  Henner,  82  O.  G. 
1988;  1898  C.  D.  38;  Brand,  83  O.  G.,  747;  1898  C.  D.  62;  Jenks, 
83  O.  G.  1513;  1898  C.  D.  81;  Eldon,  83  O.  G.  748;  1898  C.  D.  63; 
Adams,  83  O.  G.  1994;  1898  C.  D.  109;  Amberg,  84  O.  G.  507;  1898 
C.  D.  117;  Burdick,  97  O.  G.  1373;  1901  C.  D.  184;  Freeman,  104 
O.  G.,  1396;  C.  D.  172;  Schrubstadter,  110  O.  G.,  2015;  1904 
C.  D.  229;  Kurz,  113  O.  G.  2215;  1904  C.  D.  557;  Remington,  114 
O.  G.  761;   1905  C.  D.  28. 

2 — See  also  Wiessner,  85  O.  G.,  937;  1898  C.  D.  236;  Feder  v. 
Poyet,  89  O.  G.,  1343;  1899  C.  D.  218;  Litle,  160  O.  G.,  1272;  1910 
C.  D.  227. 


Essential  and  Immaterial  Features  87 

features  are  "distinguishing,"  "important,"  "promi- 
nent," or  similar  words.  That  is,  when  it  is  considered 
undesirable  to  describe  all  the  features  or  parts  of  a  de- 
sign in  words,  a  description  of  those  which  the  inventor 
regards  as  new  with  him  may  be  set  forth  by  pointing  out 
those  features  with  appropriate  words  of  the  kind  indi- 
cated leaving  it  to  be  inferred  that  the  other  parts  of  the 
design  not  described  are  old  in  the  art  of  decoration,  but 
not  that  they  are  unnecessary  to  make  up  the  design.  In 
other  words  a  design  can  not  be  a  skeleton  or  a  method  of 
producing  an  ornamental  object;  it  must  be  a  complete 
structure,  and  if  some  of  the  parts  necessary  to  produce 
such  a  structure  are  described  as  not  a  part  of  the  design 
this  rule  relative  to  a  complete  structure  would  be  vio- 
lated. 

In  the  case  of  ex  parte  Remington^  it  was  ruled  that  a 
statement  that  certain  parts  of  the  structure  were  imma- 
terial was  not  permitted.  Although  the  statement  made 
in  ex  parte  Freeman^  is  somewhat  different,  it  is  ap- 
parently intended  to  convey  the  same  idea. 

In  the  case  of  ex  parte  Requa^  the  Patent  Office  re- 
quired the  applicant  to  remove  from  the  drawing  certain 
words  and  figures  which  were  not  essential  to  the  design. 

41.  New  Matter. — The  rules  relative  to  new  matter 
that  apply  in  mechanical  applications  govern  in  design 
cases.  In  a  case  reported  in  Gourick's  digest^  the  ques- 
tion of  new  matter  was  considered.  A  claim  containing 
what  is  regarded  as  new  matter  will  be  entered  and  re- 
jected as  such ;  the  drawing  will  however  not  be  entered 
for  the  reason  that  the  old  drawing  could  not  be  readily 
restored  if  it  became  necessary  to  cancel  the  new  drawing 
and  act  on  the  original  drawing  filed. 

1 — 114  O.  G.,  761;  1905  C.  D.  28. 

2 — 104  O.  G.  1396;  1903  C.  D.  172. 

3 — 60  O.  G.  295;  1892  C.  D.  148. 

4 — Furness,  15  Gour.  39-25;  see  also  Furness,  104  O.  G.  1655. 


88  Patents  for  Designs 

In  a  recent  case  the  subject  of  new  matter  was  con- 
sidered and  the  proper  practice  was  indicated^ 

42.  The  Claim. — The  practice  of  the  Patent  Office 
since  the  decision  in  the  case  of  ex  parte  Wiessner^ 
rendered  in  1898  has  been  to  allow  but  one  claim  in  a 
design  patent.  The  former  practice  of  the  Office  and  the 
reasons  for  asking  for  the  allowance  of  more  than  one 
claim  are  reviewed  in  this  decision,  and  the  conclusion 
reached  that  separate  claims  for  the  entire  design  and 
for  segregable  features  should  not  be  permitted  in  one 
application.  These  are  some  of  the  reasons  for  that  con- 
clusion : — 

"If  the  separate  claims  do  in  fact  cover  the  'predomi- 
nant and  controlling  features'  which  are  in  and  of  them- 
selves suggestive  of  the  design  in  yits  eAti^retv,  it  is 
obvious  that  they  cover  exactly  the  same  thing,  in  so  far 
as  the  protection  furnished  is  concerned,  as  the  claim 
to  the  entire  design.  The  claim  to  the  entire  design  gives 
the  patentee  protection  on  and  prevents  others  using  the 
'predominant  and  controlling  features'  embodied  in  any 
article  which  would  be  mistaken  for  that  shown  in  the 
patent,  and  no  more  protection  is  furnished  by  an  ad- 
ditional claim.  The  only  object  in  permitting  such  ad- 
ditional claims  seems  to  be  merely  as  an  expression  of 
opinion  as  to  the  scope  of  the  patent  and  is  in  effect 
merely  a  statement  by  the  Office  that  in  its  opinion  an 
article  embodying  the  features  set  forth  would  so  nearly 
resemble  the  patentee's  design  as  to  be  mistaken  therefor 
by  the  ordinary  purchaser  and  would  therefore  be  an 
infringement  of  the  patent; 

"This   is   not,   in   my   opinion,   proper   ])ractice.     The 

1 — Miller  190  O.  G.  798. 

2 — 85  O.  G.,  937;   1898  C.  D    236. 


Claim  89 

Office  necessarily  exercises  judicial  functions  in  de- 
termining whether  the  design  is  patentable  over  those 
already-  known  in  the  art,  but  when  that  is  done  it  has 
nothing  to  do  with  the  question  of  infringement.  It 
gi-ants  a  patent  on  the  thing  which  the  applicant  has  in- 
vented and  should  then  leave  to  the  courts  what  things 
made  thereafter  would  infringe  the  patent.  This  is  the 
tenor  of  the  recent  decisions  of  the  Office." 

The  Commissioner  then  points  out  that  if  the  separate 
claims  which  it  was  at  the  time  the  practice  of  the  Office 
to  allow  do  not  cover  the  "predominant  and  controlling 
features,"  the  patent  covers  two  or  more  independent 
designs,  and  reaches  the  conclusion  above  stated  against 
the  allowance  of  more  than  one  claim. 

Since  this  decision  was  rendered  no  record  has  been 
found  of  the  direct  issue  between  an  applicant  and  the 
Office  upon  the  question  of  a  plurality  of  claims. 

In  the  first  design  patent  case,  Root  v.  Ball  &  Davis\ 
tried  in  1846  the  objection  to  the  validity  of  the  patent 
on  the  ground  that  it  contained  two  claims,  one  for  a 
stove  and  the  other  for  particular  parts  of  it,  was  not 
sustained. 

In  1870  the  Office  held  in  the  case  of  ex  i^arte  Sheppard^ 
that  two  or  more  claims  might  be  allowed.  The  Examiner 
in  his  statement  said  that  it  had  not  been  the  usual 
practice  of  the  Office  to  allow  more  than  one  claim  for  the 
reason  that  a  design  was  a  complete,  unitary  structure, 
and  that  any  departure  from  the  exact  form  disclosed  was 
a  new  design.  The  Commissioner  found  upon  investi- 
gation that  the  Office  had  not  consistently  refused  to 
grant  more  than  a  single  claim ,  but  had  granted  a 
plurality  in  a  number  of  instances.    He  was  of  the  opinion 


1— F.  C,  12035. 
2 — 1870  C.  D.,  22. 


90  Patents  for  Designs 

that  claims  might  be  allowed  for  a  combination  of  novel 
features  and  for  these  features  singly. 

This  subject  was  considered  by  the  Supreme  Court  in 
the  case  of  Dobson  v.  Carpet  Co./  and  although  there  is 
no  satisfactory  determination  of  the  question,  it  not  being 
necessary  to  discuss  it  fully  in  order  to  decide  the  case, 
the  Court  said  the  patent  was  not  invalid  because  it  con- 
tained nineteen  claims. 

Mr.  Simonds  in  his  work  argued  that  a  plurality  of 
claims  was  necessary  to  protect  properly  an  inventor.  He 
said: — 

"Where  a  design  contains  features  which  are  separate 
and  distinct  from  the  other  features,  there  seems  to  be 
no  good  reason  why  a  claim  may  not  be  made  to  each  of 
such  features.  Suppose  a  design  for  the  ornamentation 
of  the  surface  of  a  circular  plate  to  consist  of  three 
features,  radial  rays  at  the  center,  a  wreath  of  flowers 
outside  of  this,  and  ornamental  serrations  at  the  peri- 
phery. It  would  seem  absurd  to  comjDel  the  producer  to 
take  a  patent  for  the  design  as  a  whole,  thus  permitting 
any  one  so  disposed  to  use  any  two  of  these  three  features 
with  impunity. '  '^ 

The  practice  approved  in  Sheppard  of  a  i)lurality  of 
claims  was  continued  as  indicated  by  several  decisions^, 
lintil  the  Wiessner  decision  was  rendered. 

In  1894  in  the  case  of  Britton  v.  White  Mfg.  Co.^  it 
was  expressly  ruled  that  claims  for  the  entire  design  and 
for  its  separate  parts  were  properly  allowed  in  a  single 

1 — 114  U.  S.,  439. 

2 — Simonds,  p  197. 

3 — Rogers  &  Huggins,  13  O.  G.,  59  6;  187  8  C.  D.  62;  Beattie,  16 
O.  G.,  267;  1879  C.  D.  142;  Petzold  61  O.  G.,  1789;  1892  C.  D.  235; 
Britton  et  al  v.  White  IVIfg.  Co.  61  F.  93;  79  O.  G.,  2195;  1897  C.  D. 
..")00;  Coe,  81  O.  G.,  2086;   1879  C.  D.  187. 

-i — 61   F.,  93. 


Claim  9 1 

patent.  This  ruling  was  apparently  made  in  view  of  the 
decision  in  the  ease  of  Dobson  v.  Carpet  Co.^ 

In  New  York  Belting  and  Packing  Co.  v.  New  Jersey 
Car  Spring  and  Eubber  Co.^  the  two  claims  which  de- 
fined the  specific  design  made  were  held  valid.  No  ob- 
jection to  the  plurality  of  claims  was  found. 

It  was  for  a  time  the  practice  to  grant  generic  and 
si)eciflc  claims  in  design  patents.  This  was  the  ruling 
in  the  Bartholomew  case^.  In  this  case  the  decision  was 
that  generic  and  specific  claims  might  be  granted  in  the 
same  patent:  — 

"I  have  no  hesitation  in  saying,  in  view  of  the  premises 
that  a  valid  patent  may  be  granted  for  a  new  genus  or 
class  of  ornaments,  though  I  do  not  doubt  that,  under  the 
statute,  every  species,  variety,  and  individual  having 
distinct  characteristics,  under  such  a  genus  might  also 
be  patented,  the  patent  being  subordinate  and  tributary 
to  that  which  covered  the  class." 

Mr.  Simonds  writing  in  1874  thought  it  inadvisable 
to  introduce  generic  claims  into  design  cases^,  but  the 
practice  of  allowing  this  class  of  claims  apparently  con- 
tinued until  1888  when  the  decisions  in  the  two  cases  of 
ex  ])arte  Gerard^  were  rendered.  In  the  decision  in  the 
second  case  the  Commissioner  disapproved  the  require- 
ment of  the  Examiner  that  a  generic  claim  be  presented, 
and  decided  that  the  relation  of  genus  and  species  does 
not  exist  in  design  cases. 

These  decisions  in  the  Gerard  case  however  did  not 
disapi^rove  the  practice  of  drawing  claims  for  the  whole 

1 — 114  U.  S.,  439. 

2—137  U.  S.,  445. 

3 — 1869   C.   D.,   103. 

4 — Simonds  on  Designs,  p.  199. 

5 — 43  O.  G.,   1235;    1888  C.  D.   37. 


92  Patents  for  Designs 

design  and  for  distinct  and  segregable  parts  of  it.  In 
the  first  Gerard  decision^  the  following  discussion  of  the 
character  of  the  claims  for  segregable  parts  appears: — 

"Claims  for  distinct  and  segregable  parts  of  a  design 
indicate  the  skilled  judgment  of  the  Office  as  to  what 
parts  and  features  of  the  design,  if  segregated  from  the 
whole  and  applied  to  an  article  of  manufacture,  would 
accord  with  the  eye  of  the  ordinary  observer,  and  pre- 
serve the  identity  of  the  original  and  entire  design. 
Evidently  such  claims  should  be  carefully  scrutinized, 
otherwise  the  applicant  may  in  the  same  patent  cover  a 
multiplicity  of  designs.  The  Court  would  probably  not 
interfere  to  defeat  such  patents,  nor  to  limit  them  to  the 
one  original  design,  but,  regarding  each  distinct  design 
as  an  original,  would  rest  the  validity  of  the  patent  upon 
the  discretion  vested  in  the  Commissioner  as  to  such 
cases." 

Subsequent  rulings  of  the  Office  are  against  the  grant- 
ing of  patents  containing  generic  and  specific  claims.^ 

Although  there  are  several  decisions  indicationg  the 
desire  of  the  Patent  Office  at  one  time  at  least,  not  to 
permit  a  description  of  the  design  or  its  salient  features 
in  a  claim^,  the  ruling  of  the  Court  of  Appeals  of  the 
District  of  Columbia  in  the  case  of  in  re  Mygatt^  settles 
the  practice  in  favor  of  permitting  a  proper  descriptive 
claim  if  such  a  claim  is  presented.  The  decision  in  this 
case  points  out  that  prior  to  1897,  at  least,  the  suggested 


1 — 43  O.  G.,  1235;  1888  C.  D.  37. 

2 — Coe  81  O.  G.,  2086;  1897  C.  D.  187;  Eldon  83  O.  G.,  748;  1898 
C.  D.  63;  Jenks  83  O.  G.,  1513;  1898  C.  D.  81;  Feder  v.  Poyet  98  O. 
G,.  1343;  1899  C.  D.  218;  Schraubstadter  110  O.  G.,  2015;  1904  C.  D. 
229;  Kurz  113  O.  G.,  2215;  1904  C.  D.  557;  Little,  Jr.,  160  O.  G., 
1227;  1910  C.  D.  227. 

3 — Freeman  104  O.  G.,  1396;  1903  C.  D.  172;  Goldsmith  110  O. 
G.,  309;  1904  C.  D.  152;  Mygatt  117  O.  G.,  589;  1905  C.  D.  243. 

4 — 121  O.  G.,  1676;  1906  C.  D.  596. 


Claim  93 

forms  provided  for  a  claim  which  included  a  description 
of  the  design,  and  that  although  a  claim  was  held  by  the 
Supreme  Court  as  valid,  notwithstanding  it  merely  re- 
ferred to  a  photographic  illustration,  it  did  not  hold  that 
a  further  description  was  not  permissible.  The  court 
said  that  although  the  form  suggested  by  the  Patent 
OfiSce  rules  for  a  claim  in  a  design  application  did  not 
include  any  description  of  the  design  that  if  this  meant 
that  no  description  was  in  any  case  permissible,  the  rules 
were  probably  in  conflict  with  the  statutes.  The  court 
thought  the  design  before  it,  a  reflector,  was  of  the  class 
in  which  a  description  of  the  salient  features  was  not  only 
advisable  but  necessary  and  concluded: — 

"What  is  a  full,  clear,  concise  and  exact  description 
of  a  design  depends  upon  what  the  design  is.  The  same 
is  true  of  the  claim.  What  is  a  sufficient  compliance  with 
the  statute  which  requires  that  a  claim  shall  particularly 
and  distinctly  point  out  the  invention,  depends  upon  the 
character  of  the  design." 

Out  of  the  conflict  of  rulings  on  the  subject  of  design 
claims,  this  safe  conclusion,  it  is  believed,  may  be  reached. 
Section  4888  revised  statutes  is  applicable  to  design 
cases  as  well  as  to  mechanical.  Section  4933  makes  it  so. 
The  former  section  requires  an  inventor  to  "particularly 
point  out  and  distinctly  claim"  that  which  he  has  in- 
vented. If  this  can  be  done  in  a  design  case  by  showing 
the  design  in  the  drawing  and  referring  to  it  in  the  claim, 
then  words  of  description  in  the  claim  are  not  necessary. 
No  design  patent  has  ever  been  held  invalid  simply  be- 
cause of  the  absence  of  a  word  description  in  the  claim. 
But  if  the  design  is  not  plainly  shown  by  the  drawing 
then  the  claim  should  contain  a  description  of  what  ap- 
plicant has  invented;  that  is,  the  prominent,  sailent, 
distinctive  and  essential  features  should  be  fully  set  forth 


94  Patents  for  Designs 

in  the  claim.  There  are  some  cases  in  which  a  word 
description  wonld  not  aid  in  the  understanding  of  the 
invention,  but  would  be  confusing^  In  such  cases  the 
formal  claim  referring  to  the  drawing  should  be  used. 
It  takes  experience,  skill  and  great  care  to  know  when  to 
describe  a  design  in  words  and  when  not  to  attempt  this. 
In  case  of  doubt  it  would  apparently  be  the  dictate  of 
reason  to  resolve  such  doubt  in  favor  of  a  description. 

During  the  time  the  Patent  Office  showed  a  desire  on 
the  part  of  its  officers  to  reduce  to  a  minimum  the  length 
of  the  specification,  a  ruling  was  made  that  the  preamble 
should  be  limited  to  the  words,  "I  claim"  and  that  other 
words  were  superfluous^  The  words,  "In  testimony 
whereof,  etc.,"  may,  however,  be  used  in  a  design  patent^. 
The  words  "substantially  as  shown"  may  be  used  in  a 
claim'*. 

The  words  "design  and  form"  in  a  design  claim 
should  be  amended  by  cancelling  "and  form"^ 

The  words  "and  described"  should  be  used  as  a  part 
of  the  claim  if  a  description  of  the  design  is  given.^. 

The  claim  should  not  in  accordance  with  the  ruling  in 
the  case  of  ex  parte  Remington^  refer  to  the  article  claim- 
ed in  the  plural,  but  should  be  limited  to  the  particular 
thing  claimed. 

43.  Drawing. — A  drawing  is  required  in  a  design  ap- 
plication of  the  same  character  as  in  an  application  for 
a  mechanical  invention^    It  is  good  practice  to  show  the 


i_Freemaii  109   O.  G.,  1339;    1904  C.  D.   619. 
2_weihman  118  O.  G.,  2252;    1905  C.  D.  437. 
3 — Patent  to  Oderman,  No.   42,249. 
4 — Owen,  195  O.  G.,  1049. 
5— Kahn  116  O.  G.,  2008;   1905  C.  D.  212. 

6 — Gerard  43  O.  G.,  1235  1888  C.  D.  37;  Voncanon  152  O.  G.,  487; 
1910  C.  D.  40. 

7—114  O.  G.,  761  ;  1905  C.  D.  28. 
8 — Rule  84,  Rules  of  Practice. 


Drawing  95 

article  in  one  view  at  least  in  complete  form;  a  per- 
spective view  is  often  the  best. 

Words  and  figures  not  forming  an  essential  part  of  a 
design  should  not  be  placed  on  the  drawing^ 

Although  the  decision  in  the  case  of  ex  parte  Parker^ 
requires  the  entire  design  to  be  illustrated,  it  does  not 
mean  that  all  the  views  shall  show  the  entire  article;  one 
complete  view  only  was  in  fact  required  in  the  Parker 
patent.  The  ruling  in  the  Parker  case  has  not  been  uni- 
formly followed,  and  although  in  most  designs  it  is  best 
to  show  a  complete  picture  of  the  article,  in  others,  such 
a  showing  is  not  necessary.  Patents  for  china  plates  and 
rubber  tires  have  often  been  issued  with  only  a  part  of 
the  article  shown  in  the  drawing. 

In  the  case  of  ex  parte  Adams^  the  question  whether 
parts  of  a  design  may  be  shown  in  dotted  lines  and  other 
parts  in  full  lines  was  discussed.  The  conclusion  reached 
in  that  case  that  they  might  be  has  not  been  uniformly 
followed,  and  was  apparently  intended  to  be  overruled 
by  the  decision  in  ex  parte  Remington^.  Whether  it 
was  or  not,  the  practice  however  for  some  time  has  been 
to  require  the  design  to  be  shown  on  the  drawing  in  full 
lines  and  to  permit  the  article  in  connection  with  which 
the  design  is  used  to  be  disclosed  in  dotted  lines.  For 
instance  in  the  patent  to  Reischmann^'  the  foot  rest  for 
stools  which  is  the  subject  of  the  patent  is  shown  in  full 
lines  and  the  part  to  which  it  is  attached  in  dotted  lines. 
This  is  the  practice  notwithstanding  the  decision  in  the 
case  of  ex  parte  Burdick.^ 


1 — Van  Slyke  Co.  60  O.  G.,  893;  1892  C.  D.  175;  Burdick  97  O.  G.. 
1373;  1901  C.  D.  184;  Requa  60  O.  G.,  295;  1892  C.  D.  148. 
2 — 80  O.  G.,  1892;  1897  C.  D.  73. 
3 — 83  O.  G.,  1994;  1898  C.  D.  109. 
4 — 114  O.  G.,  761;  1905  C.  D.  28. 
5 — No.  42,773. 
6 — 97  O.  G.,  1373;  1910  C.  D.  184. 


96  Patents  for  Designs 

The  question  lias  often  arisen  whether  internal  con- 
struction^ may  be  shown  in  design  cases  by  sectional 
views,  and  the  practice  for  a  long  while  under  the 
decisions  noted  was  not  to  permit  sectional  views.  This 
practice  was  changed  by  the  ruling  in  the  case  of  ex 
parte  Lohmaun-,  and  now  sectional  views  may  be  shown 
provided  they  are  not  used  for  the  express  purpose  of 
disclosing  features  of  internal  construction. 

^'uch  views  often  show  a  particularly  prominent  feature 
of  external  construction  which  could  not  be  well  shown 
by  using  any  of  the  other  well  recognized  views  common 
to  illustrations  by  pen  and  ink  drawings. 

Parts  of  a  design  whicli  together  form  the  design  should 
not  be  separately  illustrated  is  the  ruling  in  the  case  of 
ex  parte  Mygatt^.  Such  views  may  be  misleading  and 
may  not  properly  show  the  complete  structure  which  has 
been  invented.  Neither  are  panoramic  views  permissible 
for  the  same  reason.^  Such  views  would  not  show  the 
article  as  it  would  appear  to  the  observer. 

Whether  a  design  which  has  appreciable  extension  in 
the  third  dimension  may  be  sufficiently  disclosed  by  a  top 
and  a  bottom  plan  view,  for  instance,  without  a  side 
elevation,  has  been  the  subject  of  some  consideration 
mainly  for  the  reason,  it  is  believed,  that  the  inventor 
desired  a  patent  for  a  design  which  could  be  made  in 
various  shapes  with  the  same  ornamentation  on  all  of 
them.  Such  a  patent  which  did  not  show  the  shape  of 
a  glass  shade,  for  instance,  if  valid,  would  give  the  ap- 
plicant a  monopoly  in  a  short  shade,  a  long  shade,  one 
with  convex  sides,  sides  with  composite  curves,  and  in- 


1 — Feder  v.  Poyet  89  O.  G.,  1343;  1899  C.  D.  218;  Tucker  97  O. 
G.,  187;  1901  C.  D.  140;  Colton  104  O.  G.,  1119;  1903  C.  D.  156; 
Kohler  116  O.  G.,  596;  1905  C.  D.  192. 

2 — 184  O.  G.,  287;  1912  C.  D.  336. 

3 — 101  O.  G.,  661;  1902  C.  D.  363. 

4 — Weihman  118  O.  G.,  2252;  1905  C.  D.  437. 


Drawing  97 

numerable  other  shapes.  A  disclosure  showing  two 
dimensions  only  was  held  not  sufficient,  on  petition  to 
the  Commissioner^  In  this  case  the  Commissioner  said 
that  the  contour  of  the  article  was  an  element  of  the 
design  and  that  the  invention  claimed  did  not  reside 
in  surface  ornamentation.  If  the  invention  resides  in 
surface  ornamentation,  such  a  question  as  arose  in  this 
case  need  not  arise  in  view  of  the  ruling  in  the  FuMa 
case^. 

There  appears  to  be  no  objection  to  interior  views,  if 
the  inside  of  the  design  is  ornamental.  The  ruling  in  ex 
parte  Tucker^  and  ex  parte  Colton^  are  not  interpreted 
to  prohibit  such  views.  The  inside  of  a  box  may  be 
the  only  ornamental  feature  of  it.  Many  design  patents 
for  lockets  showing  the  interior  decorations  have  recently 
been  issued.^ 

A  figure  illustrating  graphically  the  optical  effect 
produced  by  a  design  will  not  be  permitted.^ 

44.  The  Original  Drawing — Changes  or  Additions. — • 

Whether  a  drawing  presented  after  the  application  has 
been  tiled  discloses  new  matter  will  not  be  considered  on 
petition;  this  question  is  appealable  as  it  involves  the 
merits  of  the  design.'^ 

45.  Oath.— Section  4887  of  the  revised  statutes  pro- 
vides that  if  an  application  for  a  design  patent  which  has 
been  granted  was  filed  in  a  foreign  country  more  than 
four  months  prior  to  the  filing  of  the  application  in  this 
country  no  patent  shall  be  issued  here.    The  time  within 

1 — Mygatt  171  O.  G.,  1257;   1911  C.  D.  186. 

2 — 194  O.  G.,  549. 

3 — 97  O.  G.,  187;   1901  C.  D.  140. 

4 — 104  O.  G.,  1119;   1903  C.  D.  156. 

5 — Design  patents  Nos.  44,524  and  44,525. 

6 — Walsh,   13;   Gour.,   22-20;    (AprU  1901). 

7 — Miner  190  O.  G.,  793.  See  also  Sec.  40. 


98  Patents  for  Designs 

which  an  application  for  a  mechanical  patent  nnder 
similar  circumstances  may  be  filed  is  twelve  months.  The 
oath  therefore  in  a  design  case  shonld  contain  the  state- 
ment that  the  design  has  not  been  patented  in  a  foreign 
country  on  an  ap])lication  filed  more  than  four  months 
prior  to  this  application. 

The  oath  in  design  cases  in  other  respects  conforms  very 
closely  to  the  oath  required  in  other  cases. 

46.  Changing  Mechanical  to  Design  Application,  or 
Vice  Versa. — Commissioner  Fisher  in  1870  held  that  an 
application  for  a  mechanical  invention  which  was  found 
not  to  be  allowable  could  not  be  changed  to  an  application 
for  a  design.  Not  to  make  an  application  for  the  proper 
kind  of  protection  was  in  his  opinion  a  mistake  which 
the  Commissioner  had  no  authority  to  rectify.  The  sub- 
ject matter  which  could  properly  be  protected  under  the 
design  laws  was  as  entirely  different  from  that  which  was 
protected  under  the  laws  relating  to  the  other  class  of 
inventions  as  copyright  was  different  from  either.  He 
therefore  ruled  in  the  case  of  ex  parte  Sellers^  that  after 
an  application  for  a  mechanical  patent  had  been  refused 
it  would  not  be  changed  to  an  application  for  a  design. 
A  later  request  to  have  a  design  application  changed  to 
a  mechanical  application  was  denied^.  The  Commis- 
sioner thought  it  would  be  good  practice  for  the  appli- 
cation clerk,  if  he  found  that  the  wrong  kind  of 
application  had  been  filed,  to  notify  the  applicant  in  order 
that  he  might  have  an  opportunity  to  correct  his  error. 

A  mechanical  patent  may  not  be  construed  to  be  a 
patent  for  a  design^. 

If  the  Office  makes  a  mistake  in  the  designation  of  the 
character  of  ap])lication  filed  or  if  the  applicant  is  mis- 


1—1870  c.  D.,  58. 

2 — Bailey,  37  O.  G.,  781;   1886  C.  D.  39. 

3 — Cone  V.  Morgan  Envelope  Co.,  4   Bann.  &  Ard.,   107. 


Mecpianical  and  Design  Applications  99 

lead  by  any  suggestion  of  the  Office,  the  mistake  will  he 
reetified,  and  the  wish  of  the  applicant  as  to  the  character 
of  ]iatent  desired  will  be  complied  with^ 

47.  Mechanical  and  Design  Applications  Showing" 
Same  Structure.  — It  is  obvious  that  double  protection 
may  not  be  obtained  by  securing  a  design  patent  and  a 
mechanical  patent  for  the  same  subject  matter^.  A  de- 
sign which  was  shown  in  a  mechanical  patent  could  not, 
under  the  Act  of  1861,  which  did  not  give  the  inventor 
the  right  to  make  a])plication  within  two  years  after 
public  use  or  sale,  as  the  statute  now  does,  be  subse- 
quently patented^.  The  same  was  held  under  the  Act  of 
1870.^  In  the  case  of  Burton  v.  The  Town  of  Greenville,-'^ 
the  Court  asked  the  question  whether  the  inventor  is  to 
be  i)resumed  to  have  abandoned  his  design  if  he  disc- 
loses it  in  the  drawings  of  his  mechanical  patent,  but 
did  not  answer  it  directly,  a  decision  on  this  point  not 
being  necessary.  It  did  say,  hoAvever,  that  no  reason 
appeared  why  this  should  be  regarded  as  true  until  the 
design  had  been  in  use  two  years. 

In  the  case  of  ex  parte  Palmer^  this  question  is  dis- 
cussed : — 

"Can  an  application  for  a  design  patent  be  properly 
rejected  upon  a  mechanical  patent  to  the  same  party 
showing  the  same  design?" 

The  previous  decisions  on  the  subject  are  reviewed 
and  the  conclusion  reached  that  it  is  immaterial  which 
kind   of  a   i)atent  the  inventor  first  obtains.     He  may 


1 — Hartje,  95  O.  G.,  2485;  1901  C.  D.  56;  Saunders  Jr.,  131  O. 

,  1164;  1907  C.  D.  363. 

- — H.  W.  Collender,  1872  C.  D.,  217. 

3 — Stuart  &  Bridge,  1870  C.  D.,  15. 

4 — Kohler,  1873  C.  D.,  84. 

.-, — 3  p.,  642;   1880  C.  D.  602. 

(5 — 21  O.  G.,  1111;  1882  C.  D.  5. 


100  Patents  for  Designs 

subsequently  secure  the  other  kind.  In  the  case  of  ex 
parte  Schulze-Berge^  the  Commissioner  made  this  ref- 
erence to  the  former  decisions:— "A  mechanical  patent 
has  been  held  to  be  no  bar  to  the  grant  of  a  patent  to  the 
same  patentee  for  a  design  shown  therein."  In  the  case 
of  ex  parte  Lunken^  the  ruling  was  made  that  the  grant 
of  a  mechanical  patent  did  not  prevent  the  issue  of  a 
design  patent  to  the  same  applicant  for  a  valve  casing 
although  substantially  the  same  casing  was  shown  in  the 
mechanical  patent  that  was  claimed  in  the  design  ap- 
plication, both  applications  having  been  filed  within 
eleven  days  of  each  other.  It  was  pointed  out  that  the 
grant  of  the  design  patent  for  fourteen  years  would  not 
extend  the  monolopy  beyond  the  term  of  the  mechanical 
patent  which  had  been  granted  about  three  years  before 
the  design  was  held  allowable  on  appeal. 

The  decision  in  the  case  of  Carey  Mfg.  Co.  v.  Neal  et 
aP  rendered  in  1898  holds  that  a  design  patent  may  not 
be  issued  for  a  structure  shown  and  not  claimed  in  a 
mechanical  patent  issued  more  than  two  years  before  the 
application  for  the  design  patent  was  filed.  The  Court 
said : — 

"It  is  said  that  the  inventor  of  a  machine  or  manu- 
facture may  have  a  patent  for  the  thing,  and  another  for 
the  design  of  the  thing.  This  may  be  true;  but  the  de- 
:scription  of  the  thing  would  show  the  design,  and  an 
inventor  can  not  have  a  valid  patent  applied  for  two  years 
later  for  what  is  described  in  a  prior  patent  to  himself, 
any  more  than  in  one  to  another.  Campbell  v.  Jones  104 
U,  S.,  356.  What  is  in  that  patent  may  limit  the  right, 
therefore,  to  a  valid  patent  for  what  is  in  this," 


-42  O.  G.,  293;  1888  C.  D.  4. 
-76  O.  G.,  785;  1896  C.  D.  22. 
-90  F.  725. 


Division  101 

In  a  case  decided  soon  after  that  case  was  decided  it 
was  held  that  a  design  patent  was  not  invalid  although 
the  court  found  that  the  design  was  shown  in  a  mechan- 
ical patent  issued  more  than  six  months  before  the  design 
application  was  filed^. 

The  grant  of  a  design  patent  covering  the  form  of  an 
article  does  not  prevent  the  issue  of  a  functional  patent 
to  the  same  inventor^.  In  the  case  of  ex  parte  Jones^  the 
Commissioner  ruled  that  a  design  patent  covering  the 
shape  or  configuration  of  an  article  was  not  a  bar  to  the 
issue  of  a  mechanical  patent  covering  the  structure  of 
the  device  although  the  figures  of  the  drawing  of  the  me- 
chanical ai)plication  were  fac-similes  of  the  figures  shown 
in  the  design  patent.  This  decision  was  later  held  not  to 
mean  that  a  design  patent  may  not  under  certain  condi- 
tions be  a  reference  against  an  application  for  a  mechan- 
ical structure'*.  What  those  conditions  are  was  not  point- 
ed out. 

48.  Division  of  Application. — There  is  one  decision  of 
the  Patent  Office  to  the  effect  that  a  mechanical  applica- 
tion is  not  a  proper  division  of  an  earlier  design  applica- 
tion^. The  fundamental  principle  governing  divisional 
applications  requires  this  practice.  The  filing  of  an  al- 
lowable design  application  is  not  a  constructive  reduction 
to  practice  of  the  mechanical  structure  which  the  invent- 
or would  desire  to  claim  in  his  division  of  his  design  ap- 
plication. 

The  principles  enunciated  in  this  case  are  approved  in 
the  case  of  McArthur  v.  Gilbert^. 


1 — Flomerfelt  v.  Newwitter,  85  O.  G.,  458;   1898  C.  D.  562. 

2 — W.  N.  Bartholomew,  1871  C.  D.,  298;  H.  W.  CoUender,  1872 
C.  D.,  217;  Collender  v.  Griffith,  2  F.,  206;  18  O.  G.,  241;  1880  C. 
D.,  578;  ex  parte  Gerard,  43  O.  G.,  1235;   1888  C.  D.  37. 

a — 84  O.  G.,   1281;    1898  C.  D.  155. 

-t — McQueen,  85  O.  G.,  609;   1898  C.  D.  227. 

5 — Waterman,  100  O.  G.,  233;   1902  C.  D.  235. 

6 — 110  O.  G.,  2509;   1904  C.  D.  245. 


102  Patents  for  Designs 

49.  Re-issue. — The  practice  of  the  Patent  Office  is  to 
reissue  design  patents  under  the  same  conditions  as  me- 
chanical patents.^ 

50.  Terms  of  Design  Patents. — The  terms  for  which 
design  patents  may  be  issued  are  fixed  by  statute  at  three 
and  one  half  years,  seven  years  and  fourteen  years,  at  the 
election  of  the  applicant.  Until  the  recent  decision  in 
the  case  of  in  re  Forward^,  it  was  the  practice  to  require 
the  applicant  to  elect  for  what  term  he  desired  his  pat- 
ent at  the  time  he  filed  his  application.  This  decision 
permits  the  applicant  to  change  from  the  shortest  term 
to  either  of  the  longer  terms. 

51.  Fees. — The  fees  in  a  design  case  must  be  paid  in 
full,  at  the  time  the  application  is  filed  and  are  ten  dol- 
lars for  a  three  and  one  half  year  patent,  fifteen  dollars 
for  a  seven  year  patent,  and  thirty  dollars  for  a  patent 
for  fourteen  years.  If  the  term  is  changed  from  one  of 
the  shorter  terms  to  one  of  the  longer  in  accordance  with 
the  ruling  in  the  case  of  in  re  Forward,^  the  balance  of 
Ihe  fee  for  the  longer  term  may  be  paid  at  the  time  the 
request  is  made. 

There  is  no  authority  of  law  to  return  a  fee  paid  in  a 
-design  application  after  the  application  has  been  found 
not  to  be  allowable^  nor  apparently  at  any  time  after 
fiJing  unless  clearly  paid  by  mistake.^ 

52.  Rules  and  Regulations  for  Mechanical  Applicable 
to  Design  Patent  Applications. — Section  4933  of  the  re- 


1 — Fenton  p  58;  Re-issued  design  patents  to  Snow,  No.  11771 
and  to  Buerman  No.  10321. 

2 — 196  O.  G.,  275. 

3 — 196  O.  G.,  275. 

4 — Flomerfelt,  73  O.  G.,  1411;  1895  C.  D.  101;;  Busliy,  98  O.  G. 
2588;   1902  C.  D.  111. 

5 — Sec.  4936,  R.  S. 


Forms  J  08 

vised  statutes  makes  all  provisions  and  regulations  of 
law  not  inconsistent  with  the  statutes  particularly  relat- 
ing to  designs  applicable  to  such  inventions^  It  follows 
from  this  provision  of  law  that  the  rules  which  apply  to 
mechanical  a]^])lications  apply  with  equal  force  to  de- 
sign applications  if  not  inconsistent  with  the  design  laws 
and  rules  based  specially  on  those  particular  laws.^ 

The  doctrine  of  experimental  use  has  been  held  how- 
ever not  applicable  to  designs^.  The  reasons  for  permit- 
ting experimental  use  of  a  mechanical  invention  do  not 
apply.    In  the  Tournier  case  the  Commissioner  said:— 

"The  production  of  the  design  is  what  corresponds  to 
the  reduction  to  practice  of  a  mechanical  invention,  and 
any  subsequent  use  of  it  in  public  is  not  experimental 
use,  but  is  public  use." 

53.  Form  of  Application.— The  form  of  application 
given  in  the  Rules  of  Practice  of  the  Patent  Office^  is  as 
follows: — 

Petition  for  Letters  Patent  for  a  Design: 

To  the  Commissioner  of  Patents: 

Your  petitioner,  ..,  a  citizen  of  the  United 

States  and  a  resident  of  ,  in  the  county  of  

and  State  of  .._ (or  subject,  etc.),  whose  post-office 

address  is ,  prays  that  letters  patent  may  be  grant- 
ed to  him  for  the  term  of  three  and  one-half  years  (or 
seven  years  or  fourteen  years)  for  the  new  and  original 

1 — Theberath  v.  The  Rubber  &  Celluloid  Harness  Trimming  Co., 
15  F.,  246;  23  O.  G.,  1121;   1883  C.  D.  205. 

2 — Gerard,  43  O.  G.,  1235;  1888  C.  D.  37;  Bettendorf,  184  O.  G., 
801;   1912  C.  D.  353. 

3 — Tournier,  90  O.  G.,  1948;   1900  C.  D.  37. 

4 — Edition  of  July  17,  1907,  Eighth  reprint  of  May  1,  1913. 


104  Patents  for  Designs 

design  for  ,  set  forth  in  the  annexed  specification. 

Signed  at  ,  in  the  county  of and  State  of 

,  this day  of ,  19..... 


Specification. 

To  all  whom  it  may  concern: 

Be  it  known  that  I, ,  a  citizen  of  the  United 

States,  residing  at  ,  in  the  county  of  ,  and 

State  of  (or  subject,  etc.),  have  invented  a  new, 

original,  and  ornamental  Design  for  WatchrCases,  of 
which  the  following  is  a  specification,  reference  being 
had  to  the  accompanying  drawing,  forming  part  thereof. 

The  figure  is  a  plan  view  of  a  watch  case,  showing  my 
new  design. 

I  claim: 

The  ornamental  design  for  a  watch  case,  as  shown. 


Witnesses : 


The  words  "and  described"  should  be  included  in  the 
claim  if  the  specification  contains  a  description  of  feat- 
ures of  the  design.^ 


1 — Voncanon,  152  O.  G.,  487;  1910  C.  D.  40. 


Forms  105 

Oath. 


I  ss  :— 


^ ,  the  above-named  petitioner.--,  being 

sworn  (or  affirmed),  depose.  -  and  say..-  that 

citizen  .  .  of^ and  resident...  of^  ..,  that  

verily  believe  to  be  the  original,  first,  and 

* inventor  of  the  design  for  ^ de- 
scribed and  claimed  in  the  annexed  specification;  that 

do...-  not  know  and  do.-,  not  believe  that  the  same 

was  ever  known  or  used  before invention  thereof, 

or  patented  or  described  in  any  printed  publication  in 

any  country  before   -. invention  thereof,   or  more 

than  two  years  prior  to  this  application,  or  in  public  use 
or  on  sale  in  the  United  States  for  more  than  two  years 
prior  to  this  application;  that  said  design  has  not  been 
patented  in  any  country  foreign  to  the  United  States  on 
an  application  filed  by — .  or - legal  representa- 
tives or  assigns  more  than  four  months  prior  to  this  ap- 
plication; and  that  no  application  for  patent  on  said  de- 
sign has  been  filed  by  or  representatives 


1 — If  the  inventor  be  dead,  the  oath  will  be  made  by  the  admin- 
istrator; if  insane,  by  the  guardian,  conservator,  or  legal  represen- 
tative. In  either  case  the  affiant  will  declare  his  belief  that  the  par- 
ty named  as  inventor  was  the  original  and  first  inventor. 

2 — If  the  applicant  be  an  alien,  state  of  what  foreign  country  he 
is  a  citizen  or  subject. 

3 — Give  residence  address  in  full;  as  "a  resident  of ,  in  the 

county  of and  State  of ,"  or  "of  No street, 

in  the  city  of  ,  county  of and  State  (Kingdom,  Re- 
public, or  Empire)  of " 

4 — "Sole"  or  "joint." 

5 — Insert  title  of  invention. 


106  Patents  for  Designs 

or  assigns  in  any  eonntry  foreign  to  the  United  States, 
except  as  follows:^  .-- .- 


Inventor's  full  nanier 
Sworn  to  and  subscribed  before  me  this  - day  of 

,  19 

[SEAL.]  ^ 

[Signature  of  justice  or  notary.] 


[Official  character.] 


This  form  of  specification  may  of  course  be  changed  if 
a  description  of  the  features  of  the  design  is  desired.  The 
claim  may  be  altered  to  describe  what  is  claimed  as  the 
important  features  of  the  invention. 


1 — Name  each  country  in  which  an  application  has  been  filed,  and 
in  each  case  give  date  of  filing  the  same.  If  no  application  has  been 
filed,  erase  the  words  "except  as  follows." 

2 — All  oaths  must  bear  the  signature  of  the  affiant. 

3 *  *  *  "When  the  person  before  whom  the  oath  or  affirma- 
tion is  made  is  not  provided  with  a  seal,  his  official  character  shall 
be  established  by  competent  evidence,  as  by  a  certificate  from  a 
clerk  of  a  court  of  record  or  other  proper  officer  having  a  seal." 

A  certificate  of  the  official  character  of  a  magistrate,  stating  date 
of  appointment  and  term  of  office,  may  be  filed  in  the  Patent  Office, 
which  will  obviate  the  necessity  of  separate  certificates  in  individ- 
ual cases. 

When  the  oath  is  taken  abroad  before  a  notary  public,  judge,  or 
magistrate,  his  authority  should  in  each  instance  be  proved  by  a 
certificate  of  a  diplomatic  or  consular  officer  of  the  United  States. 


Marking  "Patexted"  107 

54.  Marking  a  Design  "Patented".— The  sections  of 
the  revised  statutes^  requiring  patentees  to  give  notice  to 
the  public  that  their  articles  have  been  patented  apply  to 
patentees  of  designs.  The  form  of  notice  prescribed  by 
the  statute  which  consists  of  the  word  "patented"  and 
the  day  and  year  the  patent  was  granted,  does  not  enable 
the  public  to  determine  whether  the  article  is  protected 
by  a  design  patent  or  the  other  character  of  patent.  If 
the  notice  required  the  number  of  the  patent  to  be  given, 
this  could  be  determined,  for  the  highest  number  of  de- 
sign patents  now  issued  is  in  the  forty-five  thousands, 
whereas  the  other  character  of  patents  now  receive  a 
number  beyond  the  million  mark  and  all  such  patents 
bearing  the  number  45000  have  long  expired.  The  public 
is  therefore  not  informed  by  the  prescribed  notice  wheth- 
er an  article  is  protected  by  a  design  or  a  mechanical  pat- 
ent. 

If  the  marking  of  a  design  in  accordance  with  the 
statutory  provision  is  omitted,  the  burden  of  proof  is  on 
the  plaintiff  to  show  that  the  defendant  has  had  proper 
notice  of  the  fact  that  the  design  is  patented.- 

1 — Sections  4900  and  4901. 

2 — Schofiekl  V.  Dunlcp,  42  F.  323;   52  O.  G.  1369;   1890  C.  D.  449. 


Chaptek  VI. 
PROCEDURE  IN  THE  PATENT  OFFICE. 


55.  Examination. — The  general  rules  for  the  examina- 
tion of  other  applications  to  determine  if  the  application 
is  formal  apply  to  design  applications. 

Design  patents  have  not  been  reclassified  by  the  class- 
ification division  of  the  Office.  They  are  now  classified 
in  the  following  classes  arranged  alphabetically: 

DESIGNS. 


Advertising- 
Aeration  and  Bottling 
Apparel 

Baths  and  Closets 
Beds 

Book  Binding- 
Boots  and  Shoes 
Bread,  Crackers  and  Lozen- 
ges 
Brushing-  and  Scrubbing 
Builders'  Hardware 
Butchering 
Care  of  Live  Stock 
Carpentry 

Carriages  and  Wagons 
Chairs 

Chemicals  and  Medicines 
Clasps  and  Buckles 
Clav  and  Pottery 
Coffins 
Confectionery 


( 'rinoline  and  Corsets 

Curtain  Fixtures 

Cutlery 

Dairy  Appliances 

Dentistry 

Educational  Appliances 

Electricity 

Felting  and  Hats 

Fences  and  Gates 

?^ine  Arts 

Fire-Arms,  Shields,  and 

Targets 
Fishing  and  Trapping 
Fuel 

Furniture 
Games  and  Toys 
Garden  and  Orchard 
Grinding-  and  Polishing 
Glass 
Harness 
Harrows  and  Diggers 


110 


Patents  for  Designs 


Harvesters 

Hoisting 

Horology 

Hose  and  Belting 

Household  Articles 

Jewelry 

Journals  and  Bearings 

Knitting  and  Netting 

Lamps  and  Gas  Fixtures 

Lanndry  Appliances 

Locks  and  Latches 

Masonry 

Measuring  Instruments 

Mechanical  Powers 

Metal  Working 

Mills  and  Machinery 

Musical  Instruments 

Optical  Instruments 

Packing  and  Storing  Ves- 
sels 

Pai)er  Manufactures 

Paving 

Photography  and  Appli- 
ances 

Plows 

Pneumatics 

Presses 

Printing 


Pumps 

Railway  Cars 
Refrigeration 
Roofing 
Safes 

Sewing  Machines 
Shii)s  and  Boats 
Signals 

Soap  and  Candles 
Stationery 

Steam  A^acuum  Pumps 
Steam  Boilers 
Steam  Engines 
Steam  Valves 
Stone  Working 
Store  Furniture 
Stoves  and  Furnaces 
Surgery 
Threshing- 
Tobacco 
Toilet 

Trunks  and  Equipments 
Umbrellas  and  Fans 
Vegetable  Cutters  and 

Crushers 
Velocipedes 
Wheels  and  Tires 
Weaving  Fabrics 
Wood  AVorking 


In  determining  whether  a  design  is  anticipated  a  search 
is  made  of  the  design  patents  classified  in  one  of  the 
classes  to  which  the  design  belongs  specified  above,  and 
in  other  classes  in  which  experience  has  shown  that  the 
device  may  ])roliably  ])e  found.    The  ])atents  classified  in 


Examination  111 

mechanical  divisions  wliicli  are  of  the  same  <>eneral  na- 
ture as  the  applicant's  device  are  also  examined.  A  lari>-e 
part  of  the  "search"  in  design  applications  is  made 
through  catalogues  filed  in  the  Office. 

The  protection  given  in  most  foreign  countries  to  the 
invention  or  creation  which  in  this  country  is  subject 
matter  for  the  issue  of  a  design  patent  is  of  a  different 
character  from  that  given  under  our  laws.  None  of  these 
certificates  of  registration  or  other  forms  of  grant  are 
filed  with  the  copies  of  our  design  ])atents,  and  foreign 
l)atents  exce])t  those  which  are  filed  in  the  mechanical 
divisions  of  the  Patent  Office  are  rarely  searched  in  mak- 
ing an  examination  of  a  design  patent  application. 

As  the  doctrine  of  analogous  art  is  not  recognized  in 
design  i)atents  the  search  for  references  may  be  made 
without  regard  to  the  art  to  which  the  particular  design 
a])]ilication  relates.  To  make  a  preliminary  search  or  a 
search  on  an  application  is  therefore  a  matter  of  much 
difficulty. 

Final  action  by  the  Patent  Office  on  an  application  for 
a  design  cannot  be  prevented  by  a  change  in  the  descrip- 
tion of  the  design  or  in  the  form  of  the  claim,  for  patenta- 
bility de])ends  upon  the  appearance  of  the  design  as  an 
entirety,  and  not  on  the  form  of  the  claim.^ 

56.  Interference. — An  interference  is  now  declared  by 
the  Patent  Office  only  between  design  applications  or  be- 
tween design  applications  and  design  patents,  not  as  for- 
merly between  a  design  application  and  a  mechanical 
patent  or  a  mechanical  application  and  a  design  patent. - 

The  general  rules  of  i)ieading  and  i)ractice  applicable 
to  interferences  in  mechanical  cases  are  followed  in  design 

1 — Hanson,  103  O.  G.,  1417;  1903  C.  D.  284;  Segelhorst,  109  O 
G.,  1887;   1904  C.  D.  125;  Kurz,  113  O.  G.,  2215;   1904  C    D    557 

2 — Collender  v.  Griffith,  3  O.  G.,  91;  1873  C.  D.  14;  3  O  G  267- 
1873  C.  D.  43;  McArthur  v.  Gilbert,  110  O.  G.,  2509;  1904  *C.  d' 
24  5. 


112  Patexts  for  Designs 

interferences,  and  the  same  general  tests,  of  course,  apply 
in  determining  the  presence  of  interf erring  subject  matter 
as  in  deciding  novelty  or  infringement. 

If  the  claims  in  the  applications  or  the  patents  in- 
volved are  the  conventional  claims  for  the  design  as 
shown  and  described,  the  issue  will  be  interpreted  by  a 
consideration  of  the  description  and  drawings. ^ 

As  experimental  use  of  a  design  is  not  necessary  to  de- 
termine its  value  a  design  is  reduced  to  practice  when  it 
has  been  completely  produced^.  This  is  true  for  the 
reason  that  it  is  not  necessary  for  a  design  to  be  "use- 
ful" in  the  sense  the  word  is  used  in  section  4886  of  the 
revised  statutes. 

An  applicant  who  has  disclosed  his  design  in  his  ap- 
plication for  a  mechanical  patent  is  not  entitled  to  be  the 
senior  party  if  another  has  filed  a  design  application  be- 
fore the  former  has  tiled  an  application  for  his  design 
disclosed  in  his  mechanical  application^.  The  filing  of 
the  mechanical  application  is  not  a  constructive  reduc- 
tion to  practice  of  the  design  invention.  In  such  a  case 
however  the  mechanical  application  may  be  relied  upon 
to  show  prior  conception. 

57.  Petitions  and  Appeals. — The  general  rules  govern- 
ing petitions^  and  appeals'^  apply  to  design  applications. 

An  objection  by  the  exainmer  that  an  alleged  inven- 
tion shown  in  a  mechanical  application  was  proper  sub- 
ject matter  for  a  design  application  was  held  to  amount 
to  a  rejection  of  the  application*^.  The  objection  of  the 
examiner  that  the  claims  in  a  design  application  did  not 

~^Feder  v.  Poyet,  89  O.  G.,  1343;    1889  C.  D.  218. 

2 Tournier,  90  O.  G.,  1948;    1900  C.  D.  37;  Tyler  v.  St.  Amand, 

94  O.  G.,  1969;   1901   C.  D.  301. 

a— McArthur  v.  Gilbert,  110  O.  G.,  2509;   1904  C.  D.  245. 

4 — Rule  145. 

•-. — Rule  135  et  m- 

r—Schulze-Berge,  42  O.  G.,  293;  1888  C.  D.  4. 


Petitions  and  Appeals  113 

set  fortli  proper  subject  matter  for  a  design  patent  should 
have  been  a  rejection,  and  a  petition  from  such  objection 
will  not  lie^  The  requirement  that  an  applicant  set  up  a 
single  definite  article  of  manufacture  relates  to  the  mer- 
its and  will  not  be  considered  on  appeal. - 

The  question  whether  certain  description  in  the  spec- 
ihcation  should  be  canceled  may  be  considered  on  peti- 
tion^. In  a  later  decision  the  requirement  that  the  spec- 
ification be  revised  was  held  not  a  proper  subject  for 
])etition^.  In  this  case  however  the  claim  had  been  re- 
jected and  a  patent  refused  on  the  ground  that  the  spec- 
ification was  not  of  that  character  required  by  the  stat- 
utes. Whether  a  change  in  the  drawing  involves  new 
matter  will  not  be  determined  on  petition''.  This  ques- 
tion relates  to  the  merits.  A  petition  that  the  drawing- 
be  amended  was  held  to  have  been  properly  filed  and  a. 
ruling  on  the  subject  was  made.'' 

1 — Bishop,  63  O.  G.,  153;  1893  C.  D.  48;  Adams,  84  O.  G.,  311; 
1898  C.  D.  115;  Groves,  89  O.  G.,  1671;  1899  C.  D.  226. 

2 — Sherman  v.  Harms,  89  O.  G.,  2067;  1899  C.  D.  240. 

3 — Mygatt,  117  O.  G.  598;  1905  C.  D.  243;  118  O.  G.,  1685;  1905. 
C.  D.  409;  190  O.  G.,  1029. 

4— GoldsoH,  189  O.  G.,  523. 

5 — Miner,  190  O.  G.,  793. 

6 — Mygatt,  171  O.  G.,  1257;  1911  C.  D.  186. 


TABLE  OF  CASES  CITED. 


Names  of  Cases.  Pages  in  this  book. 

AdaiMs 28,  76,  86,  95,  113 

Amberg-    25,  86 

Anderson  v.  Saint   39,  47 

Ashley  v.  Tatmn 77,  81,  83 

B 

Bailey    98 

Bark     85 

Baruhart     46 

Bartholomew 2,  15,  19,  52,  75,  84,  91 

Bartholomew,  W.  N 101 

Beattie     90 

Bedford  v.  TInnt 22 

Bennage  v.  Phillippi 42,  49,  71 

Bergner  v.  Kaufmann  46 

Bettendorf 17,  21,  103 

Bevin  V.  Bell  Co 3,  51,  72,  74,  75 

Bishop     113 

Bleistein  et  al.  v.  Donaldson  Lithograph  Co 14 

Boldt  Co.  V.  Nivison-Weiskoif  Co 52,  72 

Boldt  Co.  V.  Turner  Bros.  Co .17,  45,  52,  56 

Bolte  &  Weyer  Co.  v.  Knight  Light  Co 17,  41,  48 

Booth  V.  Garrelly   31 

Braddock  Glass  Co.  v.  Macbeth 61 

Bradley  v.  Eccles 17,  18 

Brand  ' 33,  86 

Britton  v.  White  Mfg.  Co 47,  62,  73,  74,  75,  90 

Brower,  Broomfield    32 

Bnft'alo  Specialty  Co.  v.  Art  Brass  Co 17 


ne  Patents  for  Designs 

Bnrdick   76,  86,  95 

Burton  v.  Town  of  Greenville 99 

Busky    102 

Byram  v.  Friedberger 61,  69 

C 

Cahoone  Barnet  Mfg-.  Co.  v.  Rubber  &  Celluloid 

Harness  Co 42 

Caldwell  v.  Powell  47,  57 

Carey  Mfg.  Co.  v.  Neal  41,  100 

Cheney  Bros.  v.  Weinreb  &  Weinreb 81,  83 

Cliandler  Adjustible  Chair  &  Desk  Co.  v.  Heywood 

Bros.    *. 29 

Coats  V.  Merrick  Thread  Co 36 

Coe   86,  90,  92 

Collender   99,  101 

Collender  v.  Griffith 48,  73,  101,  111 

Colton    38,  96,  97 

Cone  V.  Morgan  Envelope  Co 98 

Craftsman's  Guild,  The 37 

Crane 15,  19 

Crier  v.  Innes   26 

Crocker  v.  Cutter  Power  Co 74 

Cushman  v.  Lines 76 

D 

Davis  V.  Davis 35 

De  Jonge  &  Co.  v.  Brenker  &  Kessler  Co 34,  35 

Device  Co.  v.  Lloyd  22 

Diamond  Rubber  Co.  v.  Consolidated  Rubber  Tire  Co.  .14 

Diffenderf er   84 

Dobson  V.  Carpet  Co 90,  91 

Dobson  V.  Dornan  81,  83 

Dukes  V.  Bauerle  69,  73 

Dunlap  V.  Schofield   77 


Table  of  Cases  .117 

E 

Earle  Mfg.  Co.  v.  Clark  &  Parsons 15 

Eaton  V,  Lewis   17 

Eclipse  Mfg.  Co.  v.  Adkins 74 

Eldon    86,  92 

Elgin  National  Watch  Co.  v.  Illinois  Watch  Case  Co..  .35 

F 

Fairchild     84 

Feder  v.  Poyet 37,  86,  92,  96,  112 

Fenno   15,  19 

Finck     85 

Flomerfelt    102 

Flomerfelt  v.  Newwitter 101 

Forward    102 

Foster  v.  Crossin 41,  50,  70 

Frank  v.  Hess  69 

Freeman 41,  48,  63,  81,  82,  86,  87,  92,  94 

Friedberger-Aaron  Mfg.  Co.  v.  Chapin 63,  64 

Fnlda  28,  32,  97 

Furness   87 

6 

Gamewell  Fire  Alarm  Telegraph  Co 37 

General  Gas  Light  Co.  v.  Matchless  Mfg.  Co 47 

Gerard 25,  31,  33,  76,  85,  91,  92,  94,  101,  103 

Goldsmith 82,  92 

Goldsoll     113 

Gorham  Mfg.  Co.  v.  White 3,  6,  59,  64,  66,  75 

Graff,  Washbourne  &  Dimn  v.  Webster 27,  56,  64,  81 

Gray    47 

Groves   113 

H 

Haggard    33 

Hanson   46,  111 


ns  Patents  for  Designs 

Haitje    99 

Hartmaii  26,  31 

Hartslioni   14,  17,  21,  48 

Hess    21,   22 

Hess  &  Hess    85 

Hewitson     26 

Hill  &  Eemier 25,  76,  86 

Hoeb  et  al.  v.  Bislioi)  (^t  al .36 

Plutter  V.  Browne   64 

J 

Jammes  v.  Carr-Lowrv  Glass  Co 56,  57 

Jenks   " 76,  86,  92 

Jennings  v.  Kibbe   64,  67 

Johnson     22 

Jones    101 

K 

Kahn    94 

Kap})    29 

Kern 21,  45,  48 

Kino- 24,  30,  35,  36 

Knothe 14,  21,  45,  48,  52,  71 

Kohler   38,  96,  99 

Krans  v.  Fitzpatrick 3,  54,  66 

Kmz 76,  86,  92,  HI 

L 

Lambert   46,  48 

Lane  Bros.  Co.  v.  Wilcox  Mfg.  C^o 22 

Lee  &  Shepard   • '^^> 

Leidersdorf  v.  Flint 35 

Leigh  &  Saart 52,  71 

Lewis  27 


Table  of  Cases  119 

Liclitenstein  v.  Straus  77 

Title,  Jr 76,  86,  92 

Lloyd     82 

Lohmann    38,  96 

Lnnken 83,  85,  100 

M 

Macbeth-Evans  Glass  Co.  v.  Rosenbaum 64 

Marvel  v.  Pearl  2,  17 

McArthur  v.  Gilbert 101,  111,  112 

McQueen     101 

Meers  v.  Kelly 73 

Menendez  v.  Holt   70 

Miller  88,  97,  113 

Miller  v.  Smith 62,  69 

Monroe  v.  Anderson 62 

Mygatt 21,  22,  23,  82,  84,  92,  96,  97,  113 

Myo-att  v.  Schauft'er-Flanm 41,  46,  48,  81 

Mygatt  v.  Zalinski   22 

N 

National  Casket  (*o.  v.  New  York  &  Brooklvn  Cas- 
ket Co ".. 83 

Newman  v.  Alvord  35 

New  York  Belting  &  Packing  Co.  v.  The  New  Jer- 
sey Car  Spring  &  Rubber  Co 83,  91 

Nickel  &  Crane  21 

Niedringhaus   42,  48,  57 

Northru])  v.  Adams 44,  49,  54,  71 

Norton     84 


Oneida  Community  Ltd 37 

Osborne  v.  Judd  49 

Owen    94 


120  Patents  for  Designs 

P 

Palmer     99 

Parker     95 

Parkinson 1,  6,  13,  15,  19,  23 

Patitz    33 

Pelonze  kScale  &  Mfg-.  Co.  v.  American  Cutlery  Co 12 

PeiTv  V.  Hoskins  . 42,  47,  48 

Perry  v.  Starrett 54,  62,  67 

Petzold   85,  90 

Phoenix  Knitting'  Works  v.  Hygienic  Fleeced  Un- 
derwear Co 65 

Phoenix  Knitting  Works  v.  Rich 81,  83 

Pope     33 

Post  V.  Richards  Hardware  Co 58,  84 

Pratt  V.  Rosenfeld   46 

Proeger    26,   31 

R 

Redway  et  al.  v.  Ohio  Stove  Co 3,  47,  62,  70 

Reliance  Noveltv  Co.  v.  Dworzek 22 

Remington  .  . .  ." 26,  86,  87,  94,  95 

Requa   87,  95 

Ripley  v.  KIson  Glass  Co 3,  64,  66 

Roberts  v.  Bennett  22 

Rogers  &  Hiiggins   90 

Root  V.  Ball  &  Davis 62,  89 

Rose  Mfg.  (^0.  V.  Whitehouse  Mfg.  Co 16,  18 

Rowe  V.  Blodgett  &  Clapp  Co 1, 11,  14, 18,  36,  48 

Royal  Metal  Mfg.  Co.  v.  Art  Metal  Works 22 

S 

Saunders  99 

Sclimohl    46 

Scholield  v.  Dunlap   107 

Schraubstadter 63,  66,  76,  86,  92 


Table  of  Cases  121 

Scbiilze-Berge   100,  112 

Scofield  V.  Browne  64 

Seaman 7,  16,  19 

Segelhorst    21,  111 

Sellers 58,  98 

Slieppard    89 

Slierman 21,  22,  84 

Sherman  v.  Harms  113 

Shoeninger 1,  19 

Simpson  v.  Davis  54,  62 

Smith  '29 

Smith  V.  Stewart  41,  47 

Smith  V.  Whitman  Saddle  Co 41,  44,  46,  50,  65,  74 

Standard  Paint  Co.  v.  Trinidad  Asphalt  Mfg.  Co 35 

Star  Bncket  &  Pump  Co.  v.  Butler  Mfg.  Co 17,  57 

Stearns  Mfg.  Co.  v.  Beard  47 

Steck    28 

Sutro  Bros.  Braid  Co.  v.  Schloss 72 

Stuart  &  Bridge   99 

T 

Tallman     29 

Theberath  v.  The  Rubber  &  Celluloid  Harness  Trim- 
ming C^o 103 

Tilden,  Thurber  Co.  v.  T.  W.  Foster  &  Bro 47 

Tompkins  Co.  v.  New  York  Woven  Wire  Mattress 

Co 27,  81,  83 

Tompkinson  v.  Willetts  Mfg.  Co 63 

^rournier 20,  22,  84,  103,  112 

Traitel    56,   84 

Tucker  38,  96,  97 

Tyler  v.  St.  Amand 58,  84,  112 

U 

Untermeyer  v.  Freund 41,  72 

Untermever  v.  Jeannot 73,  SO 


122  Patents  for  Designs 

V 

Van  Slvke 95 

\^oncanon  94,  104 

W 

Wagner  Typewriter  Co.  v.  Webster 18 

Walsh    ..". 97 

Waterman     101 

AVeihman   94,  96 

Weinberg 43,  56,  84 

Welker  v.  Weller   69 

West  Disenfecting  Co.  v.  Frank 15 

Western  Electric  Mfg.  Co.  v.  Odell  43,  72,  75 

AVestingliouse  Co.  v.  Triumph 19,  41,  48 

Whitalfv.  Lowell  Mfg.  Co 57 

Whyte    23,30,  35 

Wiessner    86,   88 

Williams,  Jr 41,  43 

Williams  Calk  Co.  v.  I^emmerer 16,  18 

Williams  v.  Syracuse  &  S.  R.  Co 17,  18 

Wood  V.  Dolby 39,  67 

Wooster  v.  Crane 48,  71 

Wright  V.  Lorenz 14,  17,  48 


INDEX 


'I'lie  references  are  to  pages. 


Page 

Act  of,  1842,  lS(il,  1870  and  May  9, 1902 5 

Act  of  February  4,  1887 9-77 

Aggreg"ation, 

Not   invention    53 

Not  patentable    33 

Proper  ground  of  rejection 55 

Distinguishable  from  combination 54 

Analogous  arts, 

Discussion  of  48 

Search  not  limited  to 71 

Appeals,  Rules  governing 112 

Appearance, 

Design  patents  refer  to 11 

Sameness  of  determines  identity 60 

Expert  not  proper  person  to  determine  identity 

of  a|)pearance   60 

Application, 

Changing  mechanical  to  design  or  vice  versa 98 

Number  filed   - 

Art,  see  State  of  the  Art. 

Article  of  manufacture,  see  Manufacture. 

Claims, 

Functional  not  allowable 23 

For  segregable  part  allowable 33 

For  part  of  entire  whole  not  allowable 33 

For  distinct  and  segregable  parts 76 

Generic  and  specific  not  allowable 76 

At  one  time  allowable 91 


124  Patents  for  Designs 

Claims  (continued)  Page 

Containing  new  matter  will  be  entered 87 

Only  one  claim  now  allowable 88 

For  entire  design  and  segregable  features  not 

now  allowable   88 

Should  not  refer  to  article  in  plural 94 

Reason  for  one  only 88 

Patents  containing  a  plurality  held  valid 89 

Plurality  formerly  allowed 89 

Plurality  necessary  to  protect  inventor 90 

For  entire  design  and  for  separate  parts  allow- 
able  90 

Generic  and  specitic  at  one  time  granted 91 

Proper  description  may  be  included  in 92 

Shall  particularly  point  out  invention 93 

When  word  description  should  be  used  in 93 

Words  ''I  claim"  superfluous 94 

*'In  testimony  whereof"  may  be  used 94 

"Substantially  as  shown  and  described,"  when 

used    94 

Final  action  on   Ill 

Classification   109 

Color, 

Mere  substitution  not  invention 56 

No  part  of  the  design 57 

Combinations,  applicable  to  designs 53 

Common  knowledg"e,  may  be  used  in  determining 

novelty    74 

Configuration, 

When  it  must  be  disclosed 28 

Must  be  disclosed  if  an  element  of  the  design 97 

Copyright, 

Articles  not  subject  to 33 

Either  copyright  or  design  protection 34 

Articles  for  which  copyright  may  not   be  ob- 
tained     33 

Creative  genius,  necessary  in  a  design 43 


Index  125 

Damages,  Pa^e 

Minimum  of  $250  77 

Under  the  Act  of  1887 77 

Decorative  arts,  statute  to  encourage 6 

Definitions  of  a  design 11 

Description, 

Character  permissible   83 

(Character  required  by  Rule  82 81 

Futility  of  in  certain  cases 82 

Required  in  some  cases 82 

May  indicate  "disting'uishing"  features  of  design. 87 

When  it  should  be  inserted 83 

Word  description  both  approved  and  disapproved .  83 

Should  word  description  be  given 79 

Photograph  sufficient 80 

Sometimes  not  intelligible  without  illustration.  .  .80 
DesigTis, 

Treatises  on  1 

Interest  in  increasing 2 

Proper  philosophical  position  12 

Definitions  of    11-12-13 

Nature  of   12 

Must  be  original   13 

Relate  to  appearance 21 

Not  a  trademark 24-36-37 

Component  detail  may  be  patented 27 

Machine  not  patentable  as  a 28 

Not  registrable  to  another  as  a  trademark 36 

Registrable  as  trademark  if  expired 36 

Name  of  not  registrable  as  trademark 37 

How  classified  109 

One  tributary  to  another 39 

Detail  of  design  patentable 27 

Disclaimer,  of  shape  of  article 28 

Division,   a  mechanical   application  not  proper  of 

design    101 

Double  protection,  may  not  be  secured 99 

Double  use,  applicable  to  designs 71 


126  Patents  for  Designs 

Drawings,  Page 

Internal  strnctnre  may  not  be  shown  in 38 

Cross  sectional  views  allowable 38 

Not  entered  if  it  contains  new  matter 87 

Changes  in  original   97 

Perspective  view  often  best 95 

Entire  design  illustrated 95 

Practice  not  uniform   95 

Words  and  figures  not  part  of  design,  omitted ....  95 

Dotted  lines,  when  used 95 

Internal  construction  not  shown  in 96 

Panoramic  views  not  permissible 96 

Interior  views  if  inside  ornamental 97 

Graphic  illustration  not  permissible   97 

Parts  should  not  be  separately  illustrated 96 

Third  dimension   96 

Practice  if  new  matter  presented 97 

Essential  features,  under  what  circumstances  may 

be  described 86 

Evidence, 

Of  experts 69 

Character  of  which  negatives  novelty 66 

Of  the  state  of  the  art 72 

Of  common  knowledge   75 

Examination, 

General  rules  applicable  to  design  applications.  .109 
Catalogaies    Ill 

Experimental  use,  not  applicable  to  designs 103-112 

Experts, 

Evidence  used   69 

Not  proper  witnesses  on  question  of  novelty 66 

Fees, 

Act  of  1861 5 

Under  present  law 9-10 

Ten,  fifteen  and  thirty  dollars 102 

Not  returned  unless  paid  by  mistake 102: 


Index  127 

Fenton  on  Desig^is,  Pa.^e 

Kaily  laws  ininted  in  full    5 

Relative  to  claims 31 

Discussion  of  unity  of  designs 33 

What  degree  of  invention  required 42 

Mere  artistic  dexterity  will  not  su])i)ort  patent.  .  .  .44 

Aggregation  not  invention 53 

Effect  of  adding  new  feature 73 

Notice  taken  of  common  knowledge 74 

Re-issue 102 

Foreign,  design  patent  laws Ill 

Form,  see  Configuration. 

Forms    103 

Function,  should  not  be  described  in  a  claim 23 

Functional  utility, 

May  be  considered  20 

Not  a  controlling  element 22 

Gambling  device,  not  valid  as  a  design 22 

General  patent  laws,  a]ipli cable  to  designs 10 

Generic  idea  of  ornamentation. 

Applicable  to  designs   75 

Subsequently  contrary  view 75 

Identity, 

True  test  of 59 

Rule  in  Gorham  case 60 

Substantial  identity  negatives  novelty 62 

Ordinary  observer  proper  person  to  determine ....  61 
Not  determined  by  placing  designs  side  by  side.  .  .63 

Immaterial  features,  should  not  be  described 87 

Improvement, 

( )f  design  not  patentable 39 

Meaning  of  this  w^ord   39 

Design  not  an  "improvement" 72 

Infringement, 

How  established   62 

Made  out  if  designs  are  substantially  similar 64 


128  Patents  for  Designs 

Infring-ement  (contiiined)  Page 

A|»])earan(M^  of  object  in  use  considered 65 

Not  relieved  l)v  nse  of  name  of  defendant 70 

Penalty  for  .  ." 77 

Substantial  identity  establivshes   62 

Character  of  evidence  which  establishes   66 

Test  not  made  by  placing  articles  side  by  side 68 

Interference, 

When  declared Ill 

General  rnles  applicable  to  design Ill 

How  issue  is  determined 112 

Internal   structure,    not   subject   matter   for  design 

patent    37 

Invention, 

Necessary  in  designs  41 

What  constitutes 41 

What  degree  necessary 41-42-43-44 

Not  shown   46 

vShown    47 

Not  shown  in  use  of  old  object  for  new  purpose.  .  .49 

Design  must  show 48 

Features  found  separately  does  not  negative 55 

Machine,  not  ]iatentable  as  a  design 28 

Manufacture, 

A  monument  is  26 

A  dwelling  house  not 27 

Defined    23-26 

Examples  of 26 

Not  necessary  to  disclose  if  design  is  for  an  or- 
nament      28 

Does  not  include  a  class  of  goods 26 

Must  be  specified 24-25 

Marking  a  design  *  'patented" 107 

Material, 

Not  feature  of  design 57 

Patentability  not  dependent  on 57 

Change  of  not  invention 56 


Index  129 

Mechanical  construction,  Page 

Description  of  should  be  eliminated 84 

Not  an  element  of  the  design 84 

Mechanical  patent, 

May  not  be  construed  to  be  a  design 98 

Showing  same  structure  as  design 99 

When  no  bar  to  grant  of  design 100 

Models,  may  be  dispensed  with 8 

Modifications,  ]u-actice  not  uniform 84 

Movable  parts, 

May  not  form  part  of  a  design 29 

Not  objectionable  in  some  cases 30 

Objection  to  has  limited  application 29 

Rule  as  to  presence  of 29 

New  matter.  Rules  relating  to 87 

Non-analogous  art    48 

Novelty, 

How  determined  59 

Comparison  of  designs  by  court 67 

Negatived  if  differences  are  not  substantial 63 

Not  sufficient  to  render  design  patentable 47 

True  tests  65 

Shown  by  state  of  the  art 72 

Oath, 

Four  months '  clause 8-97 

Form  of 105 

Obscure  use,  articles  for 18 

Original,  a  design  must  be 13 

Ornamental, 

Design  must  be 6 

DesigTis  held  not 15-16-17 

Meaning  of  term 14 

Substituted  for  '* artistic"   14 

The  proper  element  to  consider 19 

What  constitutes  ornamental  design 16 

Particular  patents  or  applications, 

A  box  for  fur  sets 15 


130  Patents  for  Designs 

Particular  Patents  or  Applications  (continued)         Page 

Rubber  eraser 15 

Damper  for  stove  pipes 15 

Casing  for  disinfecting  apparatus 15 

Grass  liook   15 

Metal   sink    15 

Machine  frame    15 

Casing  for  engine   15 

Face  plate    15 

Claw  hammer    15 

Lamp  chimney  cleaner   16 

Horseshoe  calk    16 

Vehicle  number  plates 16 

Pump  curb   17 

Bath  tub  seat   17 

Shade  roller   17 

Jar    17 

Side  frame  for  car  trucks 17 

Syringe    17 

Belt  fastener  plate  17 

Insulating  plug   17 

Washer  for  thill  couplers : 17 

Bottle    17 

Lamp  bracket    17 

Metal   spool    18 

Shade  roller 21 

Casing  for  machine 22 

Sliield    23 

Show  card  holder 25 

Banner     25 

Border  section  of  dish 27 

Bed  spring   27 

Atomizer     29 

Can  opener 29 

Pai r  of  tongs   29 

'I'ruck  frames 29 

Frame  for  water  towers  29 

FuiTiituvc   su])])ort    29 


Index  131 

PartJcubr  Patents  or  Applications  (continued)         Page 

Button   31 

Ink  stand  and  stopper 32 

Cradle  sui)porting  frame    33 

Buckle  frame  45 

Cross  straps  for  garment  supports 45 

Lamp  shade   46 

Type     4(5 

Saddle    46 

Macliine   bed    46 

Tube     46 

Monument     46 

Bottle     47 

Reel    48 

Bell     51 

( 'lotlies   brush    47 

Hay  fork  pulley   47 

( 'ooking  stove   47 

Rug    47 

Coach   lamp    47 

Badge    47 

Gas  lamp 47 

Table    48 

Ink  stand    49 

Paper  weight  49 

Jewelry  pins    50 

( 'olumn    58 

Stove    54 

Newel  post 54 

Corset    54 

Nubia     67 

Jewelry  settings   (57 

Sewing  machine  case 69 

Cap     (i9 

Trimming  for  underwear   69 

Reel    71 

Toy   bank    71 

AVatch  case 7'2 


132  Patents  for  Designs 

Particular  Patents  or  Applications  (continued)         Page 

Braid    72 

Lamp   73 

Easel    74 

Dial  plate   75 

Hose  supporter   81 

Mantel   47 

"Patented",  form  of  notice 107 

Patents  for  designs,  first  authorized 5 

Penalty,  for  infringement  9-77 

Petition, 

Form  of 79-103 

To  (Commissioner,  when  proper 112 

Pettit,  definition  of  a  design 11 

Practice, 

Not  uniform  1 

"Not  only  liberal  but  lax"  1 

Not  well  settled 2 

Final    action   not   prevented   by  change   of   de- 
scription     Ill 

"Produced",  used  in  Act  of  1842 5 

Public  use,  any  use  in  public  is  public  use 103 

Reduction  to  practice 103-112 

Re-issue,  i)ractice  governing 102 

Renwick,  definition  of  a  design 11 

Revised  Statutes,  see  Statutes. 

Robinson,  ch^finition  of  a  design 11 

Rules  of  practice, 

Hulc  84   94 

For  mechanical  applicable  to  design  applications .  102 
Scientific  American, 

F[irlv  attempts  to  protect  trademarks 35 

lici)ort  on  Act  of  May  9,  1902 12 

Sectional  views,  allowable  under  certain  conditions.  .  .38 
Segregable  part, 

(  iaim  for 33-76 

Claim  for  not  now  permitted 88 

Practice  of  allowing  claims  for  approved 92 


Index  133 

Simonds  on  Design  Patents,  Pa^e 

Decisions  conflicting-    I 

Law  applicable  to  designs    10 

Discussion  of  "improvement" 39 

Doctrine  of  double  use 72 

Generic  claims  91 

Plurality  of  claims  90 

(leneric  effect  to  claims 75 

Pleasing-  appearance  sufficient  to  support  design.  .43 

Size,  not  controlling- 5g 

Specificatian, 

^'hould  it  contain  descrii)tive  matter 2 

Form  of  .79-104 

When  distinguishing  features  may  be  described.  .  .87 

Character   of    79 

Should  it  contain  a  description 79 

"Improved"  may  not  be  used  in 40. 

Descri])tive  matter  cut  down 81 

"State  of  knowledge",  English  term .74 

State  of  the  art. 

Novelty  dependent  on   72 

Infringement  dependent  on   72 

Is  a  limitation  of  a  claim 73 

Design  anticipates  in  non-analogous  art 70 

Non-analogous  art 4g 

Statutes, 

^ct  of  1842   5_5_35 

Perversion  of 9 

Act  of  1861 5-6 

Sections  4929-4933,  Revised  Statutes.  ...'.*.'.'.'.'.'.'.".' .5 

Now  in  force   7_g  9^0 

Act  of  1870 5-(i 

Act  of  February  4,  1887 9 

Act  of  May  9,  i902 ........I 

Superficial  ornamentation, 2-28-30-31 

Subject  matter,  of  design  patent \> 

Swan,  ' '  State  of  knowledge  " [] 74 


134  Patents  for  Designs 

Term  of  patent,  Page 

Under  Act  1842 .5 

Act  of  1861  5 

Under  present  law   8 

Mnst  be  specified  in  petition 79 

Three  and  one-half,  seven,  and  fourteen  years ....  102 
Xeed  not  elect  when  application  is  filed 102 

Trademark, 

Not  patentable  as  a  design 24 

Definition  of 35 

Not  a  design 35 

Granted  under  design  act 35 

Unitary  structure, 

A  design  must  be 32 

Examples  of 55 

Test  for  determining   55 

Eight  to  have  design  considered  as 56 

How  produced  68 

TJpton  on  Trademarks 35 

^'Useful", 

Interpretation  of  this  word 19-20-21-22-112 

As  relating  to  shape  or  configuration 6-18 

Caused  contention  and  confusion 19 

Does  not  appear  in  Act  of  May  9,  1902 19 

Variations, 

Are  covered  by  design  patent   86 

Practice  not  uniform  84 

Walker  on  Patents, 

Infringement  under  Act  of  February  4,  1887 77 

Novelty  not  negatived  by  showing  all  elements 

are  old  65 

"Witnesses, 

Kxi)ert  not  usually  relied  on 66 

Expert  relied  on   69 

Words  and  figures,  if  not  part  of  design  should  be 

removed 87 

Word  description,  both  approved  and  disapproved ....  83 


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